Appeal No. 2002-1404 Page 4
Application No. 08/891,918
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
have been obvious. In re Gorman, 933 F.2d 982, 986, 18 USPQ2d 1885, 1888 (Fed.
Cir. 1991) (citations omitted).
Evidence of a suggestion, teaching, or motivation to modify a reference may flow
from the prior art references themselves, the knowledge of one of ordinary skill in the
art, or, in some cases, from the nature of the problem to be solved, see Pro-Mold &
Tool Co. v. Great Lakes Plastics, Inc., 75 F.3d 1568, 1573, 37 USPQ2d 1626, 1630
(Fed. Cir. 1996), Para-Ordinance Mfg., Inc. v. SGS Importers Int'l., Inc., 73 F.3d 1085,
1088, 37 USPQ2d 1237, 1240 (Fed. Cir. 1995), cert. denied, 117 S. Ct. 80 (1996),
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