Ex Parte FORBES et al - Page 9

          Appeal No. 1999-2775                                                        
          Application No. 08/549,847                                                  

          While we have fully considered the arguments advanced by                    
          appellants, we are not convinced thereby that the examiner's                
          conclusion of obviousness as it applies to independent claim 13             
          on appeal is in error.  Although appellants point to alleged                
          distinctions between the prior art and their invention based upon           
          use and the problem which the invention solves, we note that it             
          is clear that the purpose proposed as the reason why the artisan            
          would have found the claimed subject matter to have been obvious            
          based on the prior art need not be identical to the purpose or              
          problem which appellants indicate to be the basis for having made           
          the invention in order to establish a prima facie case of                   
          obviousness.  As long as some reasonable motivation or suggestion           
          to combine the references is provided by the prior art taken as a           
          whole, as we believe there is here, the law does not require that           
          the references be combined for the reasons contemplated by                  
          appellants.  See In re Beattie, 974 F.2d 1309, 1312, 24 USPQ2d              
          1040, 1042 (Fed. Cir. 1992); In re Dillion, 919 F.2d 688, 697,              
          16 USPQ2d 1897, 1905 (Fed. Cir. 1990) and In re Kronig, 539 F.2d            
          1300, 1304, 190 USPQ 425, 427-28 (CCPA 1976).  In addition, the             
          fact that appellants may have recognized an advantage which would           
          flow naturally from following the suggestion of the prior art               
          cannot be the basis for patentability when the difference would             


Page:  Previous  2  3  4  5  6  7  8  9  10  11  12  13  14  15  16  Next 

Last modified: November 3, 2007