Appeal No. 2004-1321 Page 9
Application No. 10/002,633
1532, 28 USPQ2d 1955, 1956 (Fed. Cir. 1993). A prima facie case of obviousness is
established by presenting evidence that would have led one of ordinary skill in the art to
combine the relevant teachings of the references to arrive at the claimed invention.
See In re Fine, 837 F.2d 1071, 1074, 5 USPQ2d 1596, 1598 (Fed. Cir. 1988) and In re
Lintner, 458 F.2d 1013, 1016, 173 USPQ 560, 562 (CCPA 1972). 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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