Appeal No. 96-2266
Application 08/156,794
Appellant argues that the combination of Christian and
Thomas is improper since neither recognizes the problem
overcome by appellant’s invention (brief, page 22). However,
this is not conclusive with regard to the question of
obviousness, because:
As 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. [Citations omitted.]
In re Beattie, 974 F.2d 1309, 1312, 24 USPQ2d 1040, 1042 (Fed.
Cir. 1992).
Nevertheless, we will not sustain the rejection. In the
first place, we find no suggestion in Christian or Thomas that
one of ordinary skill performing endoscopic surgery would ever
have occasion to insert an intravenous needle assembly, such
as disclosed by Thomas, through a device such as disclosed by
Christian into the abdominal cavity. There being no teaching
in the references to this effect, it is mere speculation to
presume that it would have been obvious to do so.
Secondly, even if the Thomas needle assembly were
inserted through valve 11 of the Christian device, the
resulting combination would not meet all the limitations of
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