Appeal No. 1999-0736
Application 08/167,581
Rejection (1)
The basis of this rejection is set forth in detail on pages
3 to 7 of the examiner’s answer, and it is unnecessary to repeat
it here.
After fully considering the record in light of the arguments
presented in appellants’ brief and in the examiner’s answer, we
agree with the examiner that claim 1 is unpatentable over Arendt
in view of Sato ‘699, and will therefore sustain the rejection as
to all of the claims on appeal.
Appellants acknowledge at page 5 of their brief that Sato
‘699 discloses degassing, but argue that the combination of
references would not have been obvious because Sato ‘699 does not
teach degassing in order to improve bonding properties at the
grain boundaries of the 2223 phases. This argument is not
persuasive, because it is well settled that “[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). Here, since Sato ‘699 discloses that
degassing by heating under decompression is desirable to prevent
inflation of the superconducting wire, which inflation causes
3
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