Appeal No. 1998-2817
Application No. 08/455,366
1985)), aff'd.mem., 795 F.2d 1017 (Fed. Cir. 1986)).
Moreover, “[a]s long as some motivation
or suggestion to combine the 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 benefits of the claimed
invention need not be explicitly disclosed to render the claim
unpatentable under § 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)). As to the appellants’
reliance on Wright,6 we must point out that, to the extent
that this decision was inconsistent with Dillon, it was
expressly overruled (see Dillon at 919 F.2d 692, 16 USPQ2d
1901).
In the present case, Weil clearly teaches that hysteresis
loss of the elastic materials used in the elastic waistband of
6 In re Wright, 6 USPQ2d 1959 (Fed. Cir. 1988), cited at page 11 of the
brief.
20
Page: Previous 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 Next
Last modified: November 3, 2007