Appeal No. 2003-0918 Page 9
Application No. 09/395,659
has occurred. 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 inventors. See In re Dillon, 919 F.2d
688, 693, 16 USPQ2d 1897, 1901 (Fed. Cir. 1990)(en banc), cert. denied, 500 U.S. 904
(1991) and In re Beattie, 974 F.2d 1309, 1312, 24 USPQ2d 1040, 1042 (Fed. Cir.
1992).
In addition, it is our view that the subject matter of claim 1 is anticipated by Hoult.
In that regard, the claimed rigid elongate member is readable on Hoult's handle 12
which has a plurality of inwardly extending longitudinal ribs 44 which ribs define ridges
and trenches which extend along substantially the entire length of the handle.
Affirmance of the 35 U.S.C. § 103 rejection is appropriate, since it is well settled that a
disclosure that anticipates under 35 U.S.C. § 102 also renders the claim unpatentable
under 35 U.S.C. § 103, for "anticipation is the epitome of obviousness." Jones v.
Hardy, 727 F.2d 1524, 1529, 220 USPQ 1021, 1025 (Fed. Cir. 1984). See also In re
Fracalossi, 681 F.2d 792, 794, 215 USPQ 569, 571 (CCPA 1982); In re Pearson, 494
F.2d 1399, 1402, 181 USPQ 641, 644 (CCPA 1974).
For the reasons set forth above, the decision of the examiner to reject claim 1
under 35 U.S.C. § 103 is affirmed.
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