Appeal No. 2006-1020
Application No. 09/899,066
support the rejection in a minor capacity, it should be
positively included in the statement of rejection. In re
Hoch, 428 F.2d 1341, 1342 n.3, 166 USPQ 406, 407 n. 3 (CCPA
1970). However, the Williams reference is not necessary to
support motivation to combine Beis and Chino. The obvious
advantage of providing a surveillance camera with autofocus
zoom together with a specific teaching of compensating a
filter induced out-of-focus with pre-stored zoom data
provides sufficient motivation for the combination of the
cited references. Appellant contends that motivation
involving correction of lens out-of-focus is insufficient
because it is not claimed (Brief at page 21). However, it
is not a requirement that motivation to combine be found
within appellant’s claims. Nevertheless, we note that such
motivation is cited as the primary object of appellant’s
invention (Specification page 1, line 8).
Appellant further argues that the references of Beis
and Chino are concerned with distinctly different problems
and that they function differently (Brief at page 13). The
examiner responds that both references are concerned with
insertion and removal of optical filters from the optical
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