Ex Parte DONG et al - Page 10




              Appeal No. 2004-1543                                                                   Page 10                  
              Application No. 09/303,991                                                                                      


                     Based on our analysis and review of Cox and claims 7 to 13, it is our opinion that                      
              the differences include (1) synchronizing the analog video outputs by providing a                               
              reference signal to phase-locked loop circuitry in at least one of the CMOS image                               
              sensors; and (2) maintaining the analog video outputs from the CMOS image sensors in                            
              analog format along the entire signal path from the CMOS image sensors to the display.                          


                      With regard to these differences, the examiner determined (final rejection, pp. 6-                      
              8) that at the time the invention was made it would have been obvious to one with                               
              ordinary skill in the art to have modified Cox  to (1) use a  phase-locked loop as the                          
              pixel clock; and (2) maintain the analog video outputs from the CMOS image sensors in                           
              analog format along the entire signal path from the CMOS image sensors to the display                           
              as taught by Higashitsutsumi.  We do not agree.                                                                 


                      Most if not all inventions arise from a combination of old elements.  See In re                         
              Rouffet, 149 F.3d 1350, 1357, 47 USPQ2d 1453, 1457 (Fed. Cir. 1998).  Thus, every                               
              element of a claimed invention may often be found in the prior art.  See id.  However,                          
              identification in the prior art of each individual part claimed is insufficient to defeat                       
              patentability of the whole claimed invention.  See id.  Rather, to 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                       








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