Appeal No. 2000-1307 Page 9
Application No. 08/474,314
The appellant's position
The appellant argues (brief, pp. 8-12; reply brief, pp. 1-4) that the proposed
modification(s) to the chair of Thaden are improper and not suggested by the applied
prior art.
Our position
It is clear to us that the combined teachings of the applied prior art (i.e., Thaden,
Deegener and Burton) would not have made it obvious at the time the invention was
made to a person of ordinary skill in the art to have modified the chair of Thaden to
arrive at the claimed subject matter.
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. It is impermissible, however, simply to engage
in a hindsight reconstruction of the claimed invention, using the appellant's structure as
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