Appeal No. 2006-3174
Application No. 10/488,501 5
discloses that belt C1 can be adjusted when there is variation
in the size of a box (col. 3, lines 65 to 66).
We agree with the appellant that there is no motivation to
combine the teachings of Hiramoto with the teachings of Serra.
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 appellant. 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 appellant’s
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 appellant’s
structure as a template and selecting elements from references
to fill the gaps. The references themselves must provide some
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