Appeal No. 96-3404
Application 08/145,775
275, 277 (CCPA 1968). In our view, the combined teachings of
Waters and Viner establish the obviousness of the subject
matter defined by claims 3, 10 and 16 within the meaning of 35
U.S.C. § 103.
Turning now to the rejection of claim 4 under 35 U.S.C. §
103 as being unpatentable over Waters in view of Leeds, the
appellant argues that Leeds utilizes his U-shaped hook as a
bail by which the module may be conveniently transported and
handled rather that removing the module from a mold. However,
“[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
16
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