Appeal No. 98-2779
Application 08/496,604
1 based upon use of the surgical clamp set forth in claim 1
for gripping a foreign object and the problem which the
invention solves, we note that it is clear that the purpose
proposed as the reason why the artisan would have found the
claimed subject matter to have been obvious based on the prior
art need not be identical to the purpose or problem which
appellant indicates to be the basis for having made the
invention in order to establish a prima facie case of
obviousness. As long as some reasonable motivation or
suggestion to combine the references is provided by the prior
art taken as a whole, as we believe there is in this case, the
law does not require that the references be combined for the
reasons contemplated by appellant. See In re Beattie, 974
F.2d 1309, 1312, 24 USPQ2d 1040, 1042 (Fed. Cir. 1992); 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
Kronig, 539 F.2d 1300, 1304, 190 USPQ 425, 427-28 (CCPA 1976).
In addition, the fact that appellant may have recognized an
advantage which would flow naturally from following the
suggestions of the prior art cannot be the basis for
patentability when the difference would otherwise have been
8
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