Appeal No. 1998-2602
Application 08/303,158
abandoned and will not be considered. It is our function as a
court to decide disputed issues, not to create them.”)
We consider claim 1. After discussing each reference
individually, the Examiner asserts [answer, page 5] that “[i]t
would have been obvious ... to modify Ushiki et al’s video
advertisement system wherein the accounting means provided
thereof would incorporate the capability of compensating the
viewer for the apparent viewing of the transmitted video
advertisement responsive to a verifying means which verify the
apparent viewing of the transmitted video signal in the same
conventional manner as shown by Von Kohorn.”
Appellant argues [brief, pages 4 to 6] that the suggested
combination of the references is improper because “[t]here is no
suggestion or motivation provided by Ushiki to interfere with
that communication as would be required by a combination with Von
Kohorn” [id. at 6]. We disagree. We are of the opinion that
Appellant is looking for an explicit teaching for the Examiner-
suggested combination. Appellant’s view in this regard is
misplaced because 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
5
Page: Previous 1 2 3 4 5 6 7 8 9 Next
Last modified: November 3, 2007