Appeal No. 98-2141
Application No. 08/427,653
arguments are not persuasive because, first, even if Jones, as
modified in view of Kato, would not solve appellant’s problem,
[a]s 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 invention.
In re Beattie, 974 F.2d 1309, 1312, 24 USPQ2d 1040, 1042 (Fed.
Cir. 1992). See also In re Kemps, 97 F.3d 1427, 1430, 40
USPQ2d 1309, 1311 (Fed. Cir. 1996). Also, limitations
appearing in the specification will not be read into the
claims. Sjoland v. Musland, 847 F.2d 1573, 1582, 6 USPQ2d
2020, 2027 (Fed. Cir. 1988); In re Prater, 415 F.2d 1393,
1405, 162 USPQ 541, 551 (CCPA 1969). While the combination of
Jones and Kato may not contain all the specific construction
which appellant discloses, it does suggest the construction
claimed in claim 1. 3
Accordingly, the rejection of claim 1 will be sustained.
3For example, on pages 14 to 15 of the brief, appellant
argues that "the outlet of [Jones’] first stage pump has a
check valve therein preventing the pressure in the reservoir
from acting on the outlet of the first stage pump," but there
is nothing recited in claim 1 which would exclude the presence
of such a check valve.
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