Ex parte DEGUCHI - Page 9




          Appeal No. 1998-1320                                                        
          Application No. 08/305,643                                                  


          teaching of a single 7, 8 segment LED display, suggesting that              
          one of ordinary skill would recognize the cost savings of a                 
          single as opposed to plural segmented digital displays.  To                 
          bolster his position, the Examiner cites In re Karlson, 311                 
          F.2d 581, 136 USPQ 184 (CCPA 1963), which the Examiner asserts              
          (Answer, page 5) stands for the principle that omission of an               
          element and its function in a combination where the remaining               
          elements perform the same functions involves only routine                   
          skill in the art.                                                           
               In response, Appellant’s arguments (Brief, page 7)                     
          primarily focus on the contention that the teachings of the                 
          Digi-Key reference are insufficient to establish a prima facie              
          case of obviousness for modifying the plural displays of                    
          either the admitted prior art system or Null to meet the                    
          claimed requirement of a single 7, 8 segment LED display, a                 
          feature in each of the independent claims.  Upon careful                    
          review of the applied prior art in light of the arguments of                
          record, we are in agreement with Appellant’s position as                    
          stated in the Briefs.  Our interpretation of the disclosure of              
          Digi-Key coincides with that of Appellant, i.e., this                       
          reference teaches nothing more than that single digit displays              
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