Appeal No. 1998-0183
Application No. 08/413,040
First of all, we note that Appellants have not specifically
argued claim 14. The limitations argued above regarding
independent claims 1 and 8 are not contained in claim 14 since
it depends on claim 12. The Examiner asserts (answer, page 5)
that “[r]e claims 1, 8, and 14, Goss does not disclose the use
of
a keypad. Morgan et al. discloses [sic] . . . a keypad for
transmitting key information to its operating electronics,
. . . . The use of such a keypad [of Morgan] in Goss in
order to provide this extra security against unauthorized use
would be an expedient obvious to one of ordinary skill in the
art.” We conclude that the Examiner has established a prima
facie case to reject claim 14. We do not agree with
Appellants (brief, pages 10 to 14) that there is no motivation
to combine. We think that Appellants’ view in this respect is
misplaced. There does not have to be a specific teaching in
the prior art for the suggested combination. It is well
established that while there must be some teaching, reason,
suggestion, or motivation to combine existing elements to
produce the claimed device, it is not necessary that the cited
references or prior art specifically suggest making the
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