Appeal No. 2005-2184 Παγε 4
Application No. 09/457,728
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, 1312, 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).
Göken describes a radio which has a hybrid receiver that is capable of receiving
digital as well as analog signals. When the program is available in both digital and
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