Ex parte MASAKI et al. - Page 11




          Appeal No. 1998-0146                                                        
          Application 08/407,058                                                      

          Sugano would be more complex and expensive is not a                         
          technical reason indicating nonobviousness.  See Orthopedic                 
          Equipment Co. v. United States, 702 F.2d 1005, 1013, 217                    
          USPQ 193, 200 (Fed. Cir. 1983) ("[T]he fact that the two                    
          disclosed apparatus would not be combined by businessmen for                
          economic reasons is not the same as saying that it could not                
          be done because skilled persons in the art felt that there                  
          was some technological incompatibility that prevented their                 
          combination.  Only the latter fact is telling on the issue                  
          of nonobviousness."); In re Farrenkopf, 713 F.2d 714, 718,                  
          219 USPQ 1, 4 (Fed. Cir. 1983).  Yamamoto discloses that a                  
          cleaning motion can be controlled by a control circuit.  One                
          of ordinary skill in the art would have known that the                      
          motion of Sugano could be controlled by a control circuit                   
          both from Sugano and from Yamamoto.  In combining the                       
          teachings of Yamamoto and Sugano, it would have been                        
          apparent to one of ordinary skill to use software control                   
          for both operations.                                                        
               Appellants argue that one of ordinary skill in the art                 
          would not have been led to modify Yamamoto to include a                     
          cleaning control means that rotates the cleaning disk while                 

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