Appeal No. 95-4589
Application 08/042,888
when viewed by the eye of an observer. In any event, the
appellant does not dispute the examiner’s finding with respect
to Barbour that “each of the secondary lighting elements (44)
has less intensity and is smaller in size than the central
primary lighting element (41)” (see answer, page 5). Instead,
the appellant argues that Barbour is directed to a light box
whose functions are “essentially aesthetic or decorative”
rather than safety (reply brief, page 2). It is true that the
light box of Barbour (much like the light box of the primary
reference to McComb) is primarily concerned with producing
decorative effects. We must point out, however, 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)) 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.
15
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