Ex parte MAZE et al. - Page 4




                Appeal No. 96-0984                                                                                                            
                Application 08/132,529                                                                                                        


                prima facie case, the rejection is improper and will be                                                                       
                overturned.  In re Fine, 837 F.2d 1071, 1074, 5 USPQ2d 1596, 1598                                                             
                (Fed. Cir. 1988).                                                                                                             
                         Although we agree with the examiner that it would have been                                                          
                obvious to provide the seat on the bed pan of Glass with a                                                                    
                roughened surface in order to achieve Bridger’s expressly stated                                                              
                advantage of preventing relative sliding movement between the                                                                 
                seat and a user,  we cannot agree that there is a reasonable3                                                                                                  
                basis to conclude that Bridger’s roughened surface or texture                                                                 
                inherently provides interconnected depressions having                                                                         
                communicating air passageways (“[i]n relying upon the theory of                                                               
                inherency, the examiner must provide a basis in fact and/or                                                                   
                technical reasoning to reasonably support the determination that                                                              
                the allegedly inherent characteristic necessarily flows from the                                                              
                teachings of the applied prior art,” Ex parte Levy, 17 USPQ2d                                                                 


                         3Notwithstanding the appellant’s arguments to the contrary,                                                          
                “[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                                                                
                claims 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)).                                                                                           
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