Appeal No. 2000-0226 Page 8
Application No. 08/694,200
established by combining the teachings of the prior art to
produce the claimed invention, absent some teaching or
suggestion supporting the combination." ACS Hosp. Sys., Inc.
v. Montefiore Hosp., 732 F.2d 1572, 1577, 221 USPQ 929, 933
(Fed. Cir. 1984). And "teachings of references can be
combined only if there is some suggestion or incentive to do
so." Id. Here, the applied prior art contains none. None of
the applied prior art suggests providing a frameless sheet of
thin pliable material positioned across the means for closing-
off the frontal opening of the fireplace. Instead, the patent
to Le Brun teaches (column 4, lines 45-49; Figure 2) placing
the fireplace shutoff behind the conventional removable
screen, not in front of the conventional removable screen
(i.e., the means for closing-off the frontal opening of the
fireplace).
Instead, it appears to us that the examiner relied on
hindsight in reaching his obviousness determination. However,
our reviewing court has said, "To imbue one of ordinary skill
in the art with knowledge of the invention in suit, when no
prior art reference or references of record convey or suggest
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