Appeal No. 2003-0867 Page 6
Application No. 09/688,104
18 USPQ2d 1089, 1091 (Fed. Cir. 1991) and In re Keller, 642 F.2d 413, 425, 208
USPQ 871, 881 (CCPA 1981). Moreover, in evaluating such references it is proper to
take into account not only the specific teachings of the references but also the
inferences which one skilled in the art would reasonably be expected to draw therefrom.
In re Preda, 401 F.2d 825, 826, 159 USPQ 342, 344 (CCPA 1968). 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,
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