Ex parte ETTER et al. - Page 5




              Appeal No. 1999-0709                                                                      Page 5                
              Application No. 08/400,335                                                                                      


              teachings of the prior art to produce the claimed invention, absent some teaching or suggestion                 
              supporting the combination."  ACS Hosp. Sys., Inc. v. Montefiore Hosp., 732 F.2d 1572,                          
              1577, 221 USPQ 929, 933 (Fed. Cir. 1984).  To this end, the requisite motivation must stem                      
              from some teaching, suggestion or inference in the prior art as a whole or from the knowledge                   
              generally available to one of ordinary skill in the art and not from the appellants' disclosure.                
              See, e.g., Uniroyal, Inc. v. Rudkin-Wiley Corp., 837 F.2d 1044, 1052, 5 USPQ2d 1434,                            
              1439 (Fed. Cir.), cert. denied, 488 U.S. 825 (1988).                                                            
                      While we appreciate that Miller discloses a postage meter comprising a rotatable print                  
              drum 126 for imprinting postage on an envelope 16 through rotation thereof and that Hubbard                     
              and Miller teach that linearly moving and rotary print heads are both well known print systems                  
              for use in postage meters, it is not apparent to us why one of ordinary skill in the art would                  
              have been led by the combined teachings of these references to make the modification proposed                   
              by the examiner.  Specifically, the mounting of the depressible cover member 38 relative to the                 
              print system support 32, the "inking complete" switch 98, the release lever 44, the solenoid 42                 
              and the detent block 28 of Hubbard are particularly designed to cooperate in the context of a                   
              linearly actuated and linearly moving printing face.  Thus, we are at a loss to understand why                  
              or, for that matter, how, one of ordinary skill in the art would have replaced the linearly                     
              moving arrangement of Hubbard with a rotary arrangement of the type taught by Miller while                      
              still maintaining all of the necessary cooperation between the above-noted elements of Hubbard.                 









Page:  Previous  1  2  3  4  5  6  7  Next 

Last modified: November 3, 2007