Ex parte TAKIZAWA - Page 4




          Appeal No. 96-0141                                                          
          Application No. 08/084,097                                                  


          separately from the pointer body (Brief, page 3;                            
          specification, page 5).                                                     
               The examiner applies the Linne reference to show the                   
          conventionality of using a set of molding dies to create                    
          multiple molding spaces, the Pasco reference and the admitted               
          prior art to show conventional pointers made from injection                 
          molding and from two different resins, the admitted prior art               
          for the teaching of mixing metal powder and resin for molding               
          weights for a pointer, and Hirota for a multilayered article                
          made from a layer of resin and a layer of reinforced resin                  
          (Answer, pages 3-4).  From these teachings, the Examiner                    
          concludes that it would have been obvious to the artisan "to                
          use the above process as set forth in the primary reference                 
          for making any number of composite articles using two                       
          different resins" (Answer, page 4).                                         
               "When a rejection depends on a combination of prior art                
          references, there must be some teaching, suggestion, or                     
          motivation to combine the references. [Citation omitted]."  In              
          re Rouffet, 149 F.3d 1350, 1355, 47 USPQ2d 1453, 1456 (Fed.                 
          Cir. 1998).  When determining the patentability of a claimed                


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