Appeal No. 1998-2358 Page 7
Application No. 08/396,243
sharpness of the fold and the compactness of the stack" (see,
e.g., column lines 22 and 23) would serve as more than ample
motivation to combine the teachings of Cardenas and Breski.
While of course Breski does not tilt or incline the tines
downwardly for the same purpose as that of the appellants, we
observe that “[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 inventor” (In re Beattie,
974 F.2d 1309, 1312, 24 USPQ2d 1040, 1042 (Fed. Cir. 1992)) and
all the utilities or benefits of the claimed invention need not
be explicitly disclosed by the prior art references to render
the claim unpatentable under section 103 (see In re Dillon, 919
F.2d 688, 692, 696, 16 USPQ2d 1897, 1901, 1904 (Fed. Cir. 1990)
(in banc), cert. denied, 500 U.S. 904 (1991)). See also In re
Kemps, 97 F.3d 1427, 1430, 40 USPQ2d 1309, 1311 (Fed. Cir.
1996) (“the motivation in the prior art to combine the
references does not have to be identical to that of the
applicant to establish obviousness").
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