Ex parte JOHNSON et al. - Page 8




          Appeal No. 98-0409                                                          
          Application 08/420,480                                                      


          arrangement of Goss wherein all of the cartridge receivers are              
          slidably engaged with the rack portion and are all removable                
          and replaceable together as a unit.                                         
               The appellants also contend that they "were able to solve              
          problems that were never addressed by Goss" (brief, page 9).                
          We must point out, however, that 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).  See                 
          also In re Kemps, 97 F.3d 1427, 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").                                                        
               In view of the foregoing, we will sustain the rejection                
          of claims 1-3, 5, 7 and 9 under 35 U.S.C. § 103 as being                    
          unpatent-able over Goss.                                                    
               Turning to the rejection of claims 10, 11 and 14 under                 
          35 U.S.C. § 103 as being unpatentable over Goss, independent                
          claim 10 (as the appellants have argued) requires that each of              


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