Appeal No. 2003-1841 Page 5
Application No. 09/272,956
since the switch system having more keys for entering the alphanumeric
information than a portable terminal (see Suzuki's column 24, lines 50-63
and column 25, lines 45-56).
(Id. at 3-4.) The appellants argue, "one skilled in the art at the time of the invention
would not be motivated to combine Chewning with Suzuki." (Appeal Br. at 7.)
“[T]o establish obviousness based on a combination of the elements disclosed in
the prior art, there must be some motivation, suggestion or teaching of the desirability of
making the specific combination that was made by the applicants.” In re Kotzab, 217
F.3d 1365, 1370, 55 USPQ2d 1313, 1316 (Fed. Cir. 2000) (citing In re Dance, 160 F.3d
1339, 1343, 48 USPQ2d 1635, 1637 (Fed. Cir. 1998); In re Gordon, 733 F.2d 900, 902,
221 USPQ 1125, 1127 (Fed. Cir. 1984)). “[T]he factual inquiry whether to combine
references must be thorough and searching.” McGinley v. Franklin Sports, Inc., 262
F.3d 1339, 1351-52, 60 USPQ2d 1001, 1008 (Fed. Cir. 2001). “This factual
question . . . [cannot] be resolved on subjective belief and unknown authority.” In re
Lee, 277 F.3d 1338, 1343-44, 61 USPQ2d 1430, 1434 (Fed. Cir. 2002). “It must be
based on objective evidence of record.” Id. at 1343, 61 USPQ2d at 1434.
Here, Suzuki discloses a "radio communication system . . . which comprises:
portable communication devices 1100-a and 1100-b . . . ; radio base stations 1200-a,
Page: Previous 1 2 3 4 5 6 7 8 9 10 Next
Last modified: November 3, 2007