Appeal No. 1998-1149
Application No. 08/406,946
especially, lines 45-47 in column 4).
The appellants also argue that the rejection is improper
because they have discovered a problem and a solution thereto
which are not recognized by the applied references. As
properly
indicated by the examiner, however, appealed claim 1 is not
limited to a method which would include such a
problem/solution. In any event and perhaps more importantly,
it is well settled that, as long as some motivation or
suggestion to combine the references is provided by the prior
art taken as a whole, the law does not require that the
references be combined for the reasons contemplated by the
inventor. In re Beattie, 974 F.2d 1309, 1312, 24 USPQ2d 1040,
1042 (Fed. Cir. 1992). As discussed above, the reference
combination here in question would have been motivated by the
desire to obtain enhanced separation/recovery.
For the above stated reasons, we will sustain the
examiner’s § 103 rejection of appealed independent claim 1 as
being unpatentable over Aoki in view Mikami.
4
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