Appeal 2007-1361
Application 09/681,573
person of ordinary skill in the relevant field to combine a DMS with ATS'
teaching of creating documents in the PDF.
1. Claim Construction
Claim 1 recites in pertinent part the following limitations:
"a publication enabler capable of converting a data file into at least one
publication format in response to the publication instruction . . . selecting a
publication format via the publication enabler. . . ." Giving the
representative claim the broadest, reasonable construction, the limitations
require disseminating a formatted data file to a DMS.
2. Obviousness Analysis
The presence or absence of a reason "to combine references in an
obviousness determination is a pure question of fact." In re Gartside, 203
F.3d 1305, 1316, 53 USPQ2d 1769, 1776 (Fed. Cir. 2000) (citing In re
Dembiczak, 175 F.3d 994, 1000, 50 USPQ2d 1614, 1617 (Fed. Cir. 1999)).
"[I]t can be important to identify a reason that would have prompted a
person of ordinary skill in the relevant field to combine the elements in the
way the claimed new invention does." KSR Int'l v. Teleflex Inc., 127 S.Ct.
1727, 1741, 82 USPQ2d 1385, 1396 (2007). A reason to combine teachings
from the prior art "may be found in explicit or implicit teachings within the
references themselves, from the ordinary knowledge of those skilled in the
art, or from the nature of the problem to be solved." WMS Gaming, Inc. v.
Int'l Game Tech., 184 F.3d 1339, 1355, 51 USPQ2d 1385, 1397 (Fed. Cir.
9
Page: Previous 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 Next
Last modified: September 9, 2013