Ex parte STEIN et al. - Page 11



          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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