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)).
4
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