Ex parte MARUSKA et al. - Page 4




          Appeal No. 1998-0714                                                        
          Application No. 08/092,622                                                  


               Regarding representative claim 1, the examiner states                  
          (Answer, page 4) that Blackborow teaches "a system in which a               
          subsystem that includes a CPU, memory, bus, and means for                   
          interfacing is enclosed by a housing that can occupy a disk                 
          drive well of a computer system."   The examiner asserts1                                          
          (Answer, pages 4-5) that it would have been obvious to                      
          "incorporate the teaching of Blackborow into Kobayashi because              
          Kobayashi's PPM (personal processor module) is intended to be               
          the size of a hard disc drive and a microprocessor (col. 5,                 
          lines 43-47).  That suggests that the housing of Kobayashi be               
          mounted in a disk drive slot."                                              
               Appellants contend that there is no suggestion or                      
          motivation to connect the PPM to a disk drive slot of an                    
          existing computer system, as to do so would be contrary to                  
          Kobayashi's invention.  We agree.  The purpose of Kobayashi's               
          system is to allow a user to connect to different docking                   
          stations for working in different locations, but still                      


               We note that Blackborow alone appears to include all of the elements1                                                                     
          of a computer, i.e., a CPU, memory, system bus, and I/O interface means,    
          enclosed in a housing sized and shaped to fit in a disk drive slot of a     
          computer, as recited in at least claim 1.  See, for example, Figure 7A.     
          However, we decline to make a new ground of rejection; we leave it to the   
          examiner to do the fact-finding to determine if such a rejection would apply.
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