Ex Parte GOEDE et al - Page 10

          Appeal 1997-3391                                                            
          Application 08/212,578                                                      

          and that none of the three prior art references describe the                
          problem (minimizing sedative side-effects) said to have been                
          solved by applicants.  Apart from the fact that there is no                 
          evidence that applicants solve any sedative problem, the reason             
          for combining teachings of the prior art need not be the same as            
          the reason applicants developed an invention.  In re Kemps, 97              
          F.3d 1427, 1430, 40 USPQ2d 1309, 1311 (Fed. Cir. 1996) ("Although           
          the motivation to combine here differs from that of the                     
          applicant, the motivation in the prior art to combine the                   
          references does not have to be identical to that of the applicant           
          to establish obviousness.").                                                
               We have considered all other argument presented, but find              
          them unavailing.                                                            

               C.   Decision                                                          
               The decision of the examiner rejecting claims 1-7 under                
          35 U.S.C. § 103 over Lobisch, Eichel and Tamás is affirmed.                 

          SHERMAN D. WINTERS,                          )                              
          Administrative Patent Judge   )                                             
          WILLIAM F. SMITH,                            )    BOARD OF PATENT           
          Administrative Patent Judge   )      APPEALS AND                            

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