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
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