Appeal 2006-1914
Application 09/764,609
1 other instruments and wires, and will actually pull against the direction I
2 need to move the hand piece. In addition, for optical systems, it is
3 important to be able to face the tracking device towards the camera at all
4 times. The inclusion of wires makes it more difficult to properly angle
5 the tracking device so the device is visible to the cameras. (Klarsfeld, p.
6 2, ¶ 6 / c.)
7
8 38. . . . the wireless, hardwired issue is so important that a number of
9 companies that make tracking implements and devices have abandoned
10 hard-wired active optical systems in favor of passive wireless optical
11 systems and have not developed wireless active optical tracking devices
12 as claimed in the present application. (Klarsfeld, p. 2, ¶ 6. / e.)
13
14 PRINCIPLES OF LAW
15 On appeal, Appellants are responsible for showing that the Examiner
16 erroniously rejectied the claims by not establishing a legally sufficient basis
17 for combining the teachings of the prior art. Appellants may show this by
18 demonstrating that the Examiner failed to provide sufficient evidence to
19 show that one having ordinary skill in the art would have done what
20 Appellant did. United States v. Adams, 383 U.S. 39 (1966); In re Kahn, 441
21 F.3d 977, 987-988, 78 USPQ2d 1329, 1336 (Fed. Cir. 2006); DyStar
22 Textilfarben GmbH & Co. Deutschland KG v. C.H. Patrick, Co., 464 F.3d
23 1356, 1360-1361, 80 USPQ2d 1641, 1645 (Fed. Cir. 2006). The mere fact
24 that all the claimed elements or steps appear in the prior art is not per se
25 sufficient to establish that it would have been obvious to combine those
26 elements. United States v. Adams, id; Smith Industries Medical Systems,
27 Inc. v. Vital Signs, Inc., 183 F.3d 1347, 1356, 51 USPQ2d 1415, 1420 (Fed.
28 Cir. 1999). The Supreme Court, in KSR Int’l v. Teleflex Inc., 127 S.Ct.
29 1727, WL1237837, 82 USPQ2d 1385, (2007) stated that “[t]throughout this
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