Appeal No. 1998-1878 Page 15
Application No. 08/543,734
independent claims 6 and 16 and the rejection of those claims
cannot be sustained.
In addition, absent the appellants’ own disclosure, we
can think of no reason why one of ordinary skill in this art
would have combined the teachings of Habiger and Schultz as
the examiner has proposed. It is well settled that it is the
teachings of the prior art taken as a whole which must provide
the motivation or suggestion to combine the references. See
In re Fritch, 972 F.2d 1260, 1266, 23 USPQ2d 1780, 1783-84
(Fed. Cir. 1992) and Uniroyal, Inc. v. Rudkin-Wiley Corp., 837
F.2d 1044, 1051, 5 USPQ2d 1434, 1438 (Fed. Cir. 1988). Here,
the device of Schultz is directed to a different type of
vehicle from that of Habiger and we know of no reason why one
of ordinary skill would have retained only the Habiger control
handle and reconstructed the vehicle disclosed in Schultz
around the retained control handle of Habiger as suggested by
the examiner. Nor is it clear to us how one of ordinary skill
in the art would have incorporated the control handle of
Habiger, which moves in an “X” direction and in a “Y”
direction perpendicular to the “X” direction to control
vehicle steering and speed, in the vehicle of Schultz which
Page: Previous 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 Next
Last modified: November 3, 2007