Appeal 2007-0647
Application 10/421,366
considering all of the evidence before us, we find August expressly teaches a
PDA and wireless telephone at paragraph 0018. Moreover, Witkowski also
teaches a PDA and wireless telephone at paragraph 0036. We note the
Supreme Court has determined that “[w]hen a work is available in one field
of endeavor, design incentives and other market forces can prompt variations
of it, either in the same field or a different one. If a person of ordinary skill
can implement a predictable variation, § 103 likely bars its patentability."
KSR, 127 S. Ct. at 1731. Here, we find nothing more than a predictable
variation of notoriously well known elements, such as wireless PDAs,
mobile phones, and the like, that are used to process electronic menus, as
evidenced by the teachings of August, DiPietro, and Witkowski. Thus, we
conclude Appellants have not met their burden of showing error in the
Examiner’s prima facie case of obviousness for each of independent claims
20 and 37.
Independent claim 53
We consider next the Examiner’s rejection of independent claim 53 as
being unpatentable over the teachings of August in view of Visconti.
Combinability under section 103
Appellants argue neither August nor Visconti recites any suggestion
or motivation that the two different systems might be combined (App. Br.
13). Appellants further contend that the Examiner has improperly relied
upon hindsight in formulating the rejection (Id.).
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