Appeal No. 2001-1853
Application 09/198,217
claimed structural features. In re Heck, 699 F.2d 1331, 216 USPQ
1038 (Fed. Cir. 1983) and In re Kronig, 539 F.2d 1300, 190 USPQ
425 (CCPA 1976). In re Heck also indicates that the use of
patents as references is not limited to what the patentees
described as their own invention. The law of obviousness does
not require that references be combined for reasons contemplated
by an inventor, but only looks to whether the motivation or
suggestion to combine references is provided by prior art taken
as a whole. In re Beattie, 974 F.2d 1309, 24 USPQ2d 1040 (Fed.
Cir. 1992). In an obviousness determination, the prior art need
not suggest solving the same problem set forth by appellant(s).
In re Dillon, 919 F.2d 688, 692-93, 16 USPQ2d 1897, 1901 (Fed.
Cir. 1990)(en banc)(overruling in part In re Wright, 848 F.3d
1216, 1220, 6 USPQ2d 1959, 1962 (Fed. Cir. 1988)), cert. denied,
500 U.S. 904 (1991).
As noted earlier, the combined teachings and suggestions of
Bullock and Stein do not indicate to us the obviousness of the
features recited in dependent claims 16 and 17 as argued by
appellants in the brief. The subject matter set forth in
dependent claim 16 is reflective of the arrangement shown in
disclosed Figure 4. There is no teaching or suggestion in either
reference relied upon which would have indicated to the artisan
the desirability of the claimed feature set forth in claim 16 of
9
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