Appeal No. 96-2142
Application 08/284,388
problem with which they were involved (i.e., preventing the
transmission of vibration to the lining drive means) places far
too restrictive an interpretation on the term "field of
endeavor", and is not sustainable in view of the statement in
In re Clay, supra, that the "field of endeavor" criterion is
applicable "regardless of the problem addressed." If appellants'
interpretation were adopted, there would be no difference between
the two criteria set forth in In re Clay.
Appellants further argue that, while Theurer '753 discloses
several benefits of the lining means (with an interposed lever)
disclosed therein, it would not have been obvious to utilize the
Theurer '753 lining means as the lining means in the Theurer '767
apparatus because one of ordinary skill would not have done so in
order to solve the vibration transmission problem faced by
appellants.
We do not agree. "As long as some motivation or suggestion
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). See also In re
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