Appeal 2007-1089
Application 10/348,277
Issue 2 (motivation)
We decide the question of whether a person of ordinary skill in the art
at the time of the invention would have been motivated to modify Yao with
the teachings of Fielder.
Appellants argue that one of ordinary skill in the art would not have
been motivated to combine the annotation system of Yao with the coding
system of Fielder because Fielder is not directed to an annotation system.
Appellants point out the focus of Fielder is on encoding video/audio
information such that audio information is aligned with frames of video
information (Br. 8, Reply Br. 4, ¶ 2).
The Examiner disagrees. The Examiner points out that Yao teaches a
video file that includes audio and Fielder teaches embedding audio into
video. Therefore, the Examiner concludes that the modification of
“embedding” (as taught by Fielder) would have been an obvious
improvement to one of ordinary skill in the art having knowledge of both
Yao and Fielder at the time of the invention. (Answer 21).
Analysis of Issue 2
We begin by noting the U.S. Supreme Court has recently stated:
When a work is available in one field, design incentives and
other market forces can prompt variations of it, either in the
same field or in another. If a person of ordinary skill in the art
can implement a predictable variation, and would see the
benefit of doing so, §103 likely bars its patentability.
Moreover, if a technique has been used to improve one device,
and a person of ordinary skill in the art would recognize that it
would improve similar devices in the same way, using the
technique is obvious unless its actual application is beyond that
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