Appeal No. 98-2124 Page 16
Application No. 08/454,898
references is provided by the prior art taken as a whole, the
law does not require that the references be combined for the
reasons contemplated by the inventor” (In re Beattie, 974 F.2d
1309, 1312, 24 USPQ2d 1040, 1042 (Fed. Cir. 1992)) and all the
utilities or benefits of the claimed invention need not be
explicitly disclosed by the prior art references to render the
claim unpatentable under section 103 (see In re Dillon, 919
F.2d 688, 692, 696, 16 USPQ2d 1897, 1901, 1904 (Fed. Cir. 1990)
(in banc), cert. denied, 500 U.S. 904 (1991)). See also In re
Kemps, 97 F.3d 1427, 1430, 40 USPQ2d 1309, 1311 (Fed. Cir.
1996) (“the motivation in the prior art to combine the
references does not have to be identical to that of the
applicant to establish obviousness"). Moreover, Baechtle is
directed to the problem of reducing the insertion force (see,
e.g., column 1, lines 19 and 20).
In view of the above, we will sustain the rejection of
claims 1, 2, 12, 13, 15, 21 and 22 under 35 U.S.C. § 103 based
on the combined teachings of Biechler, Piorunneck and Baechtle.
Turning to the rejection of claims 4, 5 and 10 under 35
U.S.C. § 103 based on the combined teachings of Biechler,
Page: Previous 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 Next
Last modified: November 3, 2007