Appeal 2007-1361
Application 09/681,573
combination of references." In re Merck & Co., 800 F.2d 1091, 1097,
231 USPQ 375, 380 (Fed. Cir. 1986) (citing In re Keller, 642 F.2d 413, 425,
208 USPQ 871, 881 (CCPA 1981)). In determining obviousness,
furthermore, a reference "must be read, not in isolation, but for what it fairly
teaches in combination with the prior art as a whole." Id. The test for
obviousness is what the combined teachings of the references would have
suggested to one of ordinary skill in the art. In re Young, 927 F.2d 588, 591,
18 USPQ2d 1089, 1091 (Fed. Cir. 1991) (citing Keller, 642 F.2d at 425,
208 USPQ at 881).
Here, the Appellants' argument attacks ATS individually.
The Examiner, however, bases his rejection on combined teachings of ATS
and Bendik. As found regarding claims 1-4, 7, and 25-29, teachings within
the references themselves would have prompted a person of ordinary skill to
combine a DMS with ATS' teaching of PDFWriter so as to disseminate a
formatted data file to a DMS. Such a data file comprises electronic media.
Bendik adds that "system variables of the document management
system of the present invention are preferably set . . . during installation of
the system." (¶ 0049.) These system variables are used to define rules for
storage in the DMS. More specifically, "the installation process includes
answering a few queries or requests for information to set up system
parameters through variables that define, for example, the location of
document files and templates." (Id.) "The answer to a first query preferably
defines how an organization desires to store its documents. . . ." (Id.) "The
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