Appeal No. 96-2752
Application 08/224,202
The examiner has mentioned motivation in but two places in his Answer. At page 3, the
examiner states,
One of ordinary skill in the art having Revesz et al, Gomersall et al, and Rashidi would
have been well aware and obviously motivated to construct the display in Minkus of
modules to eliminate the need for unnecessary lights (see page 1, lines 11-15 of
Rashidi).
In the paragraph bridging pages 4 and 5 of the Examiner Answer, the
Examiner asserts,
At the time the invention was made, Gomersall et al had shown in Figures 5 and 10 that the
display driving means as set forth in the claims was known. One of ordinary skill in the art
having Revesz et al, Bryant et al, and Gomersall et al would have been motivated to use the
teaching in these references to realized [sic] the message units and display structure suggested in
Minkus.
With respect to combining the teachings of Minkus and Rashidi, the fact that Rashidi
teaches elimination of unnecessary lights in displays would not suggest utilizing the modular display
system of Rashidi in Minkus because it is not established as a matter of fact that Minkus suffers from the
presence of unnecessary lights. With respect to Gomersall, Revesz and Bryant, the examiner has
simply concluded that one of ordinary skill in the art would have been motivated to use specific
teachings of these references with Minkus and Rashidi. The bare conclusion that motivation existed is
unpersuasive. Teachings of references can be combined only if there is some suggestion or incentive to
do so. In re Fritch, 972 F.2d 1260, 1266, 23 USPQ2d 1780, 1783-84 (Fed. Cir. 1992).
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