Appeal No. 1997-1379
Application 08/194,748
(3)
The Examiner generally does not provide any facts to show
motivation, but merely concludes that various modifications
would have been obvious. As recently stated by the Federal
Circuit: "[T]he best defense against the subtle but powerful
attraction of a hindsight-based obviousness analysis is
rigorous application of the requirement for a showing of the
teaching or motivation to combine prior art references. . . .
Combining prior art references without evidence of such a
suggestion, teaching, or motivation simply takes the
inventor's disclosure as a blueprint for piecing together the
prior art to defeat patentability--the essence of hindsight."
In re Dembiczak, 175 F.3d 994, 999, 50 USPQ2d 1614, 1617 (Fed.
Cir. 1999).
For example, the Examiner concludes that it would have
been obvious "to have utilized a status device in the
container (fixed device) of a system like Nakamura to send the
status of the container in response to interrogation from a
mobile interrogator in order to help the interrogator make
informed decisions as suggested by Raj" (EA4). It is not
clear exactly what claim limitation the Examiner is trying to
- 10 -
Page: Previous 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 Next
Last modified: November 3, 2007