Appeal No. 2000-0304 Page 4
Application No. 08/778,688
The rejection in this case is under 35 U.S.C. § 103.
Initially we note that when it is necessary to select elements
of various teachings in order to form the claimed invention,
we ascertain whether there is any suggestion or motivation in
the prior art to make the selection made by the appellant.
Obviousness cannot be established by combining the teachings
of the prior art to produce the claimed invention, absent some
teaching, suggestion or incentive supporting the combination.
The extent to which such suggestion must be explicit in, or
may be fairly inferred from, the references, is decided on the
facts of each case, in light of the prior art and its
relationship to the appellant’s invention. As in all
determinations under
35 U.S.C. § 103, the decision maker must bring judgment to
bear. It is impermissible, however, simply to engage in a
hindsight reconstruction of the claimed invention, using the
appellant’s structure as a template and selecting elements
from references
to fill the gaps. The references themselves must provide some
teaching whereby the appellant’s combination would have been
obvious. In re Gorman, 933 F.2d 982, 986, 18 USPQ2d 1885,
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