Ex Parte Boorananut et al - Page 4


                   Appeal No. 2006-1753                                                                                              
                   Application No. 09/732,037                                                                                        


                   reasons, we find ample motivation for the skilled artisan to provide such a                                       
                   capability in the system of Meunier.                                                                              
                           In our view, the motivation to combine the references is strongly                                         
                   suggested by the Eaton reference itself – namely the advantages achieved by                                       
                   automatically updating the message originator as we noted previously.  In any                                     
                   event, it is well settled that the motivation to combine references need not be                                   
                   expressly stated in the prior art references, but may be found in the knowledge of                                
                   the skilled artisan or from the nature of the problem to be solved.  DyStar                                       
                   Textilfarben GmbH & Co. Deutschland KG v. C.H. Patrick Co., 464 F.3d 1356,                                        
                   1366 (Fed. Cir. 2006).  See also In re Kahn, 441 F.3d 977, 987-88, 78 USPQ2d                                      
                   1329, 1336 (Fed. Cir. 2006).  Notably, when the source of motivation is not from                                  
                   the prior art references, “the ‘evidence’ of motive will likely consist of an                                     
                   explanation of the well-known principle or problem-solving strategy to be                                         
                   applied.”  DyStar, 464 F.3d at 1366.  With these principles in mind, we find no                                   
                   error in our explanation why the skilled artisan would have been motivated to                                     
                   combine the references, particularly in view of the knowledge of one of ordinary                                  
                   skill in the art – an electrical engineer with several years of related industry                                  
                   experience.                                                                                                       
                           Appellants also argue that the examiner’s interpretations of “specification”                              
                   and “specification coordinator” are unreasonable in light of the terms’ usage in                                  
                   the specification [request, pages 4-6].  Appellants contend that the term                                         
                   “specification” is not reasonably construed as a web document, but rather                                         


                                                                 4                                                                   



Page:  Previous  1  2  3  4  5  6  7  8  Next 

Last modified: November 3, 2007