Ex parte PATEL et al. - Page 22




          Appeal No. 98-1458                                        Page 22           
          Application No. 08/499,211                                                  


          to automatically limit the depth to which fasteners are driven              
          to permit expansion and contraction of the panels.  We                      
          recognize that Godes provides his ridges for reasons different              
          than the appellants, however, 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).                                                


               As to claims 6 and 20, it is our opinion that the claimed              
          subject matter would have been obvious for the reasons set                  
          forth above in our affirmance of the examiner's rejection of                
          claim 6.                                                                    


                                     CONCLUSION                                       
               To summarize, the decision of the examiner to reject                   
          claims 1 through 9 and 25 is affirmed; the decision of the                  
          examiner to reject claims 10 through 24 and 26 is reversed; a               







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