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.) ThePage: Previous 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 NextLast modified: November 3, 2007