Appeal No. 96-2142
Application 08/284,388
Kemps, 97 F.3d 1427, 1430, 40 USPQ2d 1309, 1311 (Fed. Cir. 1996),
and In re Dillon, 919 F.2d 688, 693, 16 USPQ2d 1897, 1901 (Fed.
Cir. 1990). Here, the numerous benefits disclosed by Theurer
'753 (e.g., at col. 2, lines 35 to 56) would have provided ample
motivation for one of ordinary skill in the art to combine the
references as proposed by the examiner, notwithstanding that the
combination would be for a different purpose than appellants'.
As the examiner correctly states at page 4 of the answer:
the fact that Applicant [sic] uses the spacing member
means in the form of a force-transmitting lever for a
different purpose [than Theurer '753] does not alter
the conclusion that its use in a prior art device would
be [sic: have been] prima facie obvious from the
purpose disclosed in the reference.
Accordingly, we conclude that claim 1 is unpatentable under
35 USC § 103. On page 3 of the brief, appellants group claims 9
and 11 with claim 1. They also state that "they will argue that
claims 7 and 8 are allowable on their own merits", but no
explanation is presented as to why these claims are believed to
be separately patentable. Claims 7 to 9 and 11 therefore fall
with claim 1. 37 CFR § 1.192(c)(7).
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