Appeal No. 97-3990
Application 08/531,069
of either Parker '259, Parker '352, Parker '013 or Parker
'972, the examiner states that "[i]f the prior art structure
is capable of performing the intended use, then it meets the
claim" (answer, page 12).
We will not support the examiner's position. Even if we
were to agree with the examiner that it would have been
obvious to make the link forming recesses of Curtis extend
entirely across the projections in a horizontal direction in
view of the teachings of Broden, we cannot agree that it would
have been obvious to combine the teachings of Curtis, as
modified by Broden, with those of either Parker '259, Parker
'352, Parker '013 or Parker '972 in the manner proposed. The
mere fact that the device of Curtis has the capability of
being employed to form cuts in paper does not serve as a
proper motivation for combining the teachings of Curtis and
the various references to Parker as the examiner apparently
believes. Instead, in order to establish obviousness under 35
U.S.C. § 103, it is well settled that it is the teachings of
the prior art taken as a whole which must provide the motiva-
tion or suggestion to combine the references. See, e.g.,
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