Appeal No. 95-2848
Application 07/796,971
ordinary skill in the art the obviousness of the invention as set
forth in claims 1-14. Accordingly, we reverse.
We consider first the rejection of claims 1, 4, 5, 8, 11
and 12 under 35 U.S.C. § 103 as unpatentable over the teachings
of Kitamura and Kojima. Appellant has nominally indicated that
dependent claims 4, 5, 11 and 12 are separately patentable from
independent claims 1 and 8 and has presented separate arguments
in support thereof [brief, pages 5 and 8-9]. Thus, we will
consider the rejection of independent claims 1 and 8 separately
from the rejection of dependent claims 4, 5, 11 and 12.
Claim 1 is directed to a method for carrying out the
invention, and claim 8 is essentially directed to an equivalent
apparatus drafted in means plus function format. The examiner
has pointed out the teachings of Kitamura and Kojima, has
identified the perceived differences between Kitamura and claims
1 and 8, and has provided an analysis as to why Kitamura would
have been modified with the teachings of Kojima to arrive at the
invention of claims 1 and 8 [answer, pages 3-4]. Appellant
argues that the applied prior art contains no guidance of how the
features of Kitamura and Kojima could be combined to achieve the
claimed invention, and that the motivation to make the examiner’s
attempted combination does not come from within the prior art.
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