Ex parte TROVATO - Page 6




                 Appeal No. 1998-2892                                                                                     Page 6                        
                 Application No. 08/576,621                                                                                                             


                 these two references in such a manner as to meet the terms of                                                                          
                 the claims because “the teaching of Perlin is compatible with                                                                          
                 the architecture of Lipscomb” (Paper No. 8, page 3).  Claim 2                                                                          
                 depends from claim 1, and claims 8 and 13-15 depend from claim                                                                         
                 3, and so all include the elements which we found above were                                                                           
                 not present in Lipscomb.  It is our view that, even considering                                                                        
                 Lipscomb in the light of 35 U.S.C. § 103,   the shortcomings of           5                                                            
                 this reference that existed with regard to the Section 102                                                                             
                 rejection remain, and they are not alleviated by Perlin.  There                                                                        
                 is no disclosure or teaching of the claimed elements in either                                                                         
                 of the references and the examiner has not explained, nor can                                                                          
                 we perceive on our own, any teaching, suggestion or incentive                                                                          
                 in either reference which would have led one of ordinary skill                                                                         
                 in the art to modify the teachings of Lipscomb in such a manner                                                                        
                 as to meet the terms of these claims.                                                                                                  
                          We reach the same conclusions, for the same reasons, with                                                                     
                 regard to independent claim 16 and dependent claims 17-21.                                                                             
                 Claim 16 does not require the presence of map data, but recites                                                                        

                          5The test for obviousness is what the combined teachings                                                                      
                 of the prior art would have suggested to one of ordinary skill                                                                         
                 in the art.  See, for example, In re Keller, 642 F.2d 413,                                                                             
                 425, 208 USPQ 871, 881 (CCPA 1981).                                                                                                    







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