Appeal No. 96-1657
Application 07/819,345
they appear in the brief.
A. Rejection of claims 16 and 22 through 27 over Motorola and
Henderson
We treat the independent claim 16 first. With respect to
this claim, we have reviewed the Examiner’s position [answer,
pages 4 to 5] and Appellants’ corresponding arguments [brief,
pages 9 to 10, and reply brief, pages 3 to 5 and 8 to 10].
Appellants argue that Motorola teaches away from the proposed
combination because it would be a hardship on a homeowner to
have to update the data in a pager/garage door opener
periodically in order to maintain the ability to open the
garage door. We do not agree.
Initially, we note that while there must be some
teaching, reason, suggestion, or motivation to combine
existing elements to produce the claimed device, it is not
necessary that the cited references or prior art specifically
suggest making the combination (see B.F. Goodrich Co. v.
Aircraft Braking Systems Corp., 72 F.3d 1577, 1583, 37 USPQ2d
1314, 1319 (Fed. Cir. 1996) and In re Nilssen, 851 F.2d 1401,
1403, 7 USPQ2d 1500, 1502 (Fed. Cir. 1988)) as the appellants
would apparently have us believe. Rather, the test for
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