Appeal No. 97-2119
Application No. 08/263,825
minutes later. So far as applicant can see, the
Examiner has not addressed this question.
We agree with appellants that Carlson neither teaches nor
would have suggested to one of ordinary skill in the art the
setting of a timer at a predetermined relation to lunar
transit time. While Carlson’s timer may be capable of being2
modified to run in the manner set forth in the claims, there
must be a suggestion or motivation in the reference to do so.
In re Mills, 916 F.2d 680, 682, 16 USPQ2d 1430, 1432 (Fed.
Cir. 1990). In the absence of such a suggestion in the
applied reference, and the lack of a convincing line of
reasoning by the examiner, it would not have been a matter of
design choice to have the timer in Carlson provide “a signal
at lunar transit time.” Accordingly, the 35 U.S.C. § 103
rejection of claims 1 through 7 is reversed.
Turning to the obviousness rejection of claims 8 through
14, the examiner states (Answer, page 4) that in view of the
teachings of Carlson, “one of ordinary skill in the art would
2It is not clear from the disclosure (specification, page
1) whether the Corpus Christi Caller Times article is prior
art to appellants. If the article is prior art to appellants,
then the examiner is invited to explore the use of such
article in a prior art rejection.
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