Appeal No. 96-3130
Application 08/225,653
we must point out that “[a]s 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” (In re
Beattie, 974 F.2d 1309, 1312, 24 USPQ2d 1040, 1042 (Fed. Cir.
1992)) and all the utilities or benefits of the claimed invention
need not be explicitly disclosed by the prior art references to
render the claim unpatentable under section 103 (see In re
Dillon, 919 F.2d 688, 692, 696, 16 USPQ2d 1897, 1901, 1904 (Fed.
Cir. 1990) (in banc), cert. denied, 500 U.S. 904 (1991)). See
also In re Kemps, 97 F.3d 1427, 1429, 40 USPQ2d 1309, 1311 (Fed.
Cir. 1996) (“all the benefits of the claimed invention need not
be explicitly disclosed to render the claim unpatentable under
section 103"). We also observe that “[t]he fact that appellant
has recognized another advantage which would flow naturally from
following the suggestion of the prior art cannot be the basis for
patentability when the differences would otherwise have been
obvious” (Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Int.
1985), aff'd.mem., 795 F.2d 1017 (Fed. Cir. 1986)). Similarly,
the mere recognition of latent properties in an otherwise obvious
product in the prior art does not render such a product
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