Appeal No. 1999-0080
Application No. 08/558,929
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. 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 appellants'
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
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) (citations omitted). That is, something in the prior art as a
whole must suggest the desirability, and thus the obviousness, of making the
combination. See In re Beattie, 974 F.2d 1309, 1312, 24 USPQ2d 1040, 1042 (Fed. Cir.
1992); Lindemann Maschinenfabrik GmbH v. American Hoist and Derrick Co.,
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