Appeal No. 2001-2320
Application 09/097,295
has not advanced any showing or technical reasoning contradicting
the examiner’s position here. Furthermore, Ito clearly
accomplishes the groove forming step via a ram-striking process
employing ram-mounted punch 11. The motivation or suggestion to
use material deformations as in Palmer or Ito to carry out
Parson’s unspecified groove forming step and to replace
Steenstrup’s groove cutting step stems from the advantages of
same which would have been self-evident to the artisan, e.g.,
that such material deformation steps would eliminate the
unnecessary waste of material attendant a groove cutting step.
As for the failure of the applied references to recognize and/or
address the specific problems purportedly solved by the claimed
invention (see pages 10 through 12 in the main brief), it is
first noted that independent claims 1, 26 and 30 are not limited
to methods specific to such problems. Moreover, the law does not
require that references be combined for the reasons contemplated
by the inventor as long as some motivation or suggestion to
combine them is provided, as is the case here, by the prior art
taken as a whole. In re Beattie, 974 F.2d 1309, 1312, 24 USPQ2d
1040, 1042 (Fed. Cir. 1992).
Finally, the appellant (see pages 12 through 14 in the main
brief and page 4 in the reply brief) submits that commercial
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