Ex Parte Malackowski et al - Page 14

                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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