Appeal No. 2005-2181 Page 5
Application No. 10/044,268
We note that 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, 974 F.2d 1309, 1311-12, 24 USPQ2d 1040, 1042 (Fed.
Cir. 1992); Lindemann Maschinenfabrik GmbH v. American Hoist and Derrick Co., 730
F.2d 1452, 1462, 221 USPQ 481, 488 (Fed. Cir. 1984).
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