Ex parte ISENMAN - Page 9




          Appeal No. 1996-1387                                       Page 9           
          Application No. 08/110,269                                                  


          Br. at 8.)  The examiner replies, “the appellant's argument is              
          not persuasive because ‘the speed’ was motivation for                       
          combining the two references.”  (Examiner’s Answer at 8.)                   


               The appellant erred in construing the criteria for                     
          obviousness.  Obviousness is not determined based on purpose                
          alone.  In re Graf, 343 F.2d 774, 777, 145 USPQ 197, 199 (CCPA              
          1965).  It is sufficient that references suggest doing what an              
          appellant did, although the appellant's particular purpose was              
          different from that of the references.  In re Heck, 699 F.2d                
          1331, 1333, 216 USPQ 1038, 1040 (Fed. Cir. 1983); In re                     
          Gershon, 372 F.2d 535, 539, 152 USPQ 602, 605 (CCPA 1967).                  


               Here, Naemura suggests combining the references to obtain              
          the claimed invention for the aforementioned reasons.  The                  
          suggestion does not have to be the same as the appellant’s.                 


               Third, the appellant argues that combining Majima and                  
          Naemura renders the references inoperative or is contrary to                
          their teachings.  (Appeal Br. at 9-12.)  The appellant also                 
          makes  this argument regarding claim 6.  (Id. at 12-13.)  The               







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