Appeal No. 2001-1916 Page 4
Application No. 09/189,551
time the invention was made to provide "a device for varying the width and/or cross-
sectional geometry of the product by moving rollers disposed on opposite transverse
sides of the product equal distances on the Armington et al. apparatus, as taught by
Mugnai, in order to allow rapid adjustability of the width of the product."
The appellants argue throughout the briefs that there is no motivation in the
applied prior art to combine the teachings of Armington and Mugnai as set forth above
by the examiner. We agree.
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. 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
Page: Previous 1 2 3 4 5 6 7 8 9 Next
Last modified: November 3, 2007