Ex parte SANSONE - Page 13




          Appeal No. 1997-4044                                      Page 13           
          Application No. 08/504,233                                                  


          windings of the filaments as shown in Figure 8 of Davis.                    
          Thus, we disagree with the appellant that the rejection                     
          utilizing the combined teaching of Maas and Davis lacks the                 
          requisite motivation and thus involved the use of                           
          impermissible hindsight.                                                    


               Lastly, the appellant argues (brief, pp. 6-8) that there               
          is clearly no need in Maas to prevent any longitudinal                      
          extension and that Davis fails to show the need to limit the                
          longitudinal expansion of an inflatable mandrel to position                 
          hydrophones.  We find this argument unpersuasive for the                    
          following reason.  As long as some motivation or suggestion to              
          combine the references is provided by the prior art taken as a              
          whole, the law does not require that the references be                      
          combined for the reasons contemplated by the inventor.  See In              
          re Dillon, 919 F.2d 688, 693, 16 USPQ2d 1897, 1901 (Fed. Cir.               
          1990)(en banc), cert. denied, 500 U.S. 904 (1991) and In re                 
          Beattie, 974 F.2d 1309, 1312, 24 USPQ2d 1040, 1042 (Fed. Cir.               
          1992).  The Davis reference is not being relied upon to teach               
          an inflatable mandrel to correctly position hydrophones, but                
          is being relied upon to show that it is known to use fibers                 







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