Appeal No. 2003-1184
Application No. 09/737,344
is not limited to what the patentees describe as their own inventions or to the problems
with which they are concerned. They are part of the literature of the art, relevant for all
they contain.’” In re Heck, 699 F.2d 1331, 1333, 216 USPQ 1038, 1039 (Fed. Cir.
1983) (quoting In re Lemelson, 397 F.2d 1006, 1009, 158 USPQ 275, 277 (CCPA
1968)).
Appellants’ fall-back position is further undermined by appellants’ admissions
with respect to the prior art and by consideration of the problem that appellants set out
to solve. According to appellants’ description of prior art PDA watches (spec. at 1-2),
characters were generally entered by scrolling through the alphabet using buttons on
the side of a watch, making the entry of data difficult and tedious. Even if appellants
could formulate an argument based on allegations of antithetical teachings in Numazaki
and Wicks, it should be apparent to appellants that the input dial disclosed by Wicks
represents an improvement over using buttons on the side of a watch to scroll through
the alphabet.2
We sustain the rejection of representative claim 10. Appellants suggest (Brief at
4) that the claims subject to the rejection over Numazaki and Wicks are argued
separately. However, we do not find any arguments specific to the subject matter of the
dependent claims. Claims 11 and 12 thus fall with claim 10. See 37 CFR
2 That appellants may not have had actual knowledge of the teachings of Wicks is not relevant in
the instant inquiry. Knowledge of all prior art in the field of the inventor’s endeavor and of prior art
solutions for a common problem even if outside that field are attributed to the hypothetical “person having
ordinary skill in the art” at the time the invention was made. In re Nilssen, 851 F.2d 1401, 1403, 7
USPQ2d 1500, 1502 (Fed. Cir. 1988).
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