Appeal No. 2001-0484 Page 9
Application No. 09/116,409
have led one of ordinary skill in the art to combine the
relevant teachings of the references to arrive at the claimed
invention. See In re Fine, 837 F.2d 1071, 1074, 5 USPQ2d
1596, 1598 (Fed. Cir. 1988) and In re Lintner, 458 F.2d 1013,
1016, 173 USPQ 560, 562 (CCPA 1972). 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 appellants. 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. It is
impermissible, however, simply to engage in a hindsight
reconstruction of the claimed invention, using the appellants'
structure as a template and selecting elements from references
to fill the gaps. The references themselves must provide some
teaching whereby the appellants' combination would have been
obvious. In re Gorman, 933 F.2d 982, 986, 18 USPQ2d 1885,
1888 (Fed. Cir. 1991).
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