Appeal No. 2005-1042
Application No. 09/759,543
In this latter regard, the appellants argue that, “since the
present invention does not have the objective of providing a
lighter level, the motivation to combine the [Goss and Patten]
references to provide a lighter weight level as argued by the
Examiner is of no relevance to the present invention” (brief,
page 6). This argument is inconsistent with established legal
principle and therefore is unpersuasive. Notwithstanding the
appellants’ aforequoted viewpoint, 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. See In re
Beattie, 974 F.2d 1309, 1312, 24 USPQ2d 1040, 1042 (Fed. Cir.
1992).
Under these circumstances, it is our determination that the
reference evidence adduced by the examiner establishes a prima
facie case of obviousness which the appellants have failed to
successfully rebut with argument or evidence of nonobviousness.
See In re Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444
(Fed. Cir. 1992). We hereby sustain, therefore, the examiner’s
section 103 rejection of claim 1 as being unpatentable over Goss
in view of Patten.
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