Appeal No. 97-2142
Application 08/114,896
establishing that “any” magnet, such as that taught by Ootsuka,
may be bodily incorporated into Oberhardt’s instrument as the
examiner contends. Instead, it is well settled that it is the
teachings of the prior art taken as a whole which must provide
the motivation or suggestion to combine the references. See
Uniroyal, Inc. v. Rudkin-Wiley Corp., 837 F.2d 1044, 1051, 5
USPQ2d 1434, 1438 (Fed. Cir. 1988) and Interconnect Planning
Corp. v. Feil, 774 F.2d 1132, 1143, 227 USPQ 543, 551 (Fed. Cir.
1985). Here, there is no such suggestion.
As we noted above, Oberhardt in Fig. 5 clearly depicts an
electromagnet 196 which extends perpendicularly to a permanent
magnet 195. From the detailed description of this magnetic
structure in column 37, line 28 through column 38, line 33, it is
readily apparent that Oberhardt utilizes both a stationary core
and coil. The magnetic structure of Ootsuka, however, is of the
solenoid-type. More specifically, Ootsuka discloses a “first
leg” or core portion 4 that is movably mounted within a coil 6
and is connected to a pivoted lever or link for the purpose of
moving an electrical contact carrier against the bias of a spring
14 upon the energizing of the coil. There is absolutely nothing
in the combined teachings of Oberhardt and Ootsuka which would
fairly suggest to one of ordinary skill in this art to bodily
4
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