Appeal No. 98-0409
Application 08/420,480
Goss.
Considering last the rejection of claims 4 and 15-19
under 35 U.S.C. § 103 as being unpatentable over Goss in view
of Benward and Peckels, the appellants argue that there is no
motivation to combine the teachings of the references in the
manner proposed by the examiner. This is particularly the
case, in the appellants' view, since:
The invention in Goss comprises a holder wherein the
bottom of the holder incorporates a "groove or
countersink . . . into which the head or rim of the
cartridge fits and is securely held." (Col. 2,
lines 27-29, emphasis added). Because, Goss already
addressed and provided a solution for the problem of
securely holding a cartridge, the addition of a tab
to further secure the cartridge would be absolutely
unnecessary. [Brief, page 10.]
We are unpersuaded by the appellants' arguments. While
there must be some teaching, reason, suggestion, or motivation
to combine existing elements to produce the claimed device
(see ACS Hosp. Sys., Inc. v. Montefiore Hosp., 732 F.2d 1572,
1577,
221 USPQ 929, 933 (Fed. Cir. 1984)), it is not necessary that
the cited references or prior art specifically suggest making
the combination (B.F. Goodrich Co. V. Aircraft Braking Sys.
10
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