Ex parte RAO et al. - Page 14




          Appeal No. 96-3374                                                          
          Application No. 08/115,974                                                  


          hindsight.  However, it is our opinion as set forth above that              
          the applied prior art does provide the suggestion or                        
          motivation to make the selection made by the appellants.  The               
          extent to which such suggestion must be explicit in, or may be              
          fairly inferred from, the references, is decided on the facts               
          of each case, in light of the prior art and its relationship                
          to the appellants' claimed invention.  It is our determination              
          that Hiraoka and Rao suggest the desirability, and thus the                 
          obviousness, of modifying Oda to make the claimed combination.              




          Claims 2, 3 and 5 through 12                                                
               As set forth previously, the appellants have grouped                   
          claims 1 through 3 and 5 through 12 as standing or falling                  
          together.  Thereby, in accordance with 37 CFR § 1.192(c)(7),                
          dependent claims 2, 3 and 5 through 12 fall with independent                
          claim 1.  Thus, it follows that the examiner's rejections of                
          claim 2, 3 and 5 through 12 under 35 U.S.C. § 103 are also                  
          sustained.                                                                  


          Claim 13                                                                    
                                         14                                           





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