Ex parte NOGAMI - Page 6




          Appeal No. 1998-1117                                                        
          Application No. 08/220,756                                                  

          expected to use the solution that is claimed by the                         
          Appellants.                                                                 
          However, "[o]bviousness may not be established using hindsight              
          or in view of the teachings or suggestions of the inventor."                
          Para-Ordnance Mfg., 73 F.3d at 1087, 37 USPQ2d at 1239, citing              
          W. L. Gore, 721 F.2d at 1551, 1553, 220 USPQ at 311, 312-313.               
          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 agree with the Appellant that Ito does not teach a                  
          cash handling mechanism that transports the counted currency                
          to a cash outlet port of a selected customer operation                      
          station.  However, the Examiner is not relying on Ito for this              
          limitation.  The Examiner instead is relying on Yoshihiko.                  
               The Examiner is relying on Ito’s teaching of the shared                
          printer has a reason for combinability of the Ito system with               
          the Yoshihiko teachings of a shared cash handling mechanism.                
          We agree with the Examiner’s reasoning on this point.                       
          Furthermore, we wish to buttress his reasoning by pointing out              

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