Ex parte PACE et al. - Page 9




          Appeal No. 1998-0819                                                        
          Application 08/541,656                                                      


          USPQ2d at 1239, citing W.L. Gore & Assocs., Inc. v. Garlock,                
          Inc., 721 F.2d at 1551, 1553, 220 USPQ at 311, 312-13.  In                  
          addition, our reviewing court requires the PTO to make                      
          specific findings on a suggestion to combine prior art                      
          references.   In re Dembiczak, 175 F.3d 994, 1000-01, 50                    
          USPQ2d 1614, 1617-19 (Fed. Cir. 1999).                                      


               We note that the Appellants have not argued that the                   
          Examiner’s reasons to combine the prior art are in error.  In               
          particular we note that on pages 4 and 5 of the Examiner’s                  
          answer, the Examiner provides specific findings as to the                   
          suggestions to combine the prior art references.  In                        
          particular, the Examiner finds that one of ordinary skill                   
          would have been motivated to use a peg-leg low beam because                 
          the extended legs allow for the wires to be mounted further                 
          down the load beam then conventional load beam, thereby                     
          providing more accurate and secure placement of the wires.                  
          The Examiner further finds that one of ordinary skill in the                
          art would have been further motivated to make the modification              
          because the reduced thickness of the Hinlein load beam allows               


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