Appeal No. 2005-0045 Page 6
Application No. 09/801,093
. . . it would have been obvious to one of ordinary skill in the
art at the time the invention was made to have included
receiving a second signal indicative of a location of the
second party, wherein the second signal is received at the
central scheduling computer; as disclosed by Hendrey in the
system disclosed by Hall, for the advantage of providing a
method of coordinating an activity with the ability to increase
system/method effectiveness by bringing together two
mobile (phone) users.[answer at page 5]
When it is necessary in making out a rejection under 35 U.S.C. § 103, 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
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