Appeal No. 2003-0523
Application No. 09/100,952
Claims 1-12 stand rejected under 35 U.S.C. § 103 as being unpatentable over
Young, Lawler, and Yuen.
We refer to the Final Rejection (Paper No. 9) and the Examiner’s Answer (Paper
No. 15) for a statement of the examiner’s position and to the Brief (Paper No. 14) and
the Reply Brief (Paper No. 17) for appellants’ position with respect to the claims which
stand rejected.
OPINION
Instant claims 1-12 are rejected over the combined teachings of Young, Lawler,
and Yuen, as set forth at pages 3 through 6 of the Final Rejection. Appellants’
arguments in response to the rejection focus on admitted deficiencies of individual
references. However, the arguments do not speak to the combination of the references
applied. Nonobviousness cannot be established by attacking references individually
where the rejection is based upon the teachings of a combination of references. In re
Merck & Co., 800 F.2d 1091, 1097, 231 USPQ 375, 380 (Fed. Cir. 1986) (citing In re
Keller, 642 F.2d 413, 425, 208 USPQ 871, 881 (CCPA 1981)).
We agree, for example, that Yuen fails to teach “reserve-recording” as claimed.
The reference thus cannot, by itself, teach reserve-recording in combination with any
other feature. However, the rejection does not rely on Yuen for “reserve-recording,” nor
for any combination of features that includes reserve-recording. The arguments are
thus directed to issues not in controversy.
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