Ex parte NAKAMURA - Page 3




              Appeal No. 1999-1055                                                                 Page 3                 
              Application No. 08/571,342                                                                                  


                     The test for obviousness is what the combined teachings of the prior art would have                  
              suggested to one of ordinary skill in the art.  See, for example, In re Keller, 642 F.2d 413,               
              425, 208 USPQ 871, 881 (CCPA 1981).  In establishing a prima facie case of                                  
              obviousness, it is incumbent upon the examiner to provide a reason why one of ordinary                      
              skill in the art would have been led to modify a prior art reference or to combine reference                
              teachings to arrive at the claimed invention.  See Ex parte Clapp, 227 USPQ 972, 973                        
              (Bd. Pat. App. & Int. 1985).  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 appellant's disclosure.            
              See, for example, Uniroyal, Inc. v. Rudkin-Wiley Corp., 837 F.2d 1044, 1052, 5 USPQ2d                       
              1434, 1439 (Fed. Cir.), cert. denied, 488 U.S. 825 (1988).                                                  
                     We understand the appellant’s invention to be an interactive system in which the                     
              operator of a vehicle is provided with real time information from forward-looking and                       
              rearward-looking cameras, from pre-recorded information available on CD-ROM discs                           
              and EE-PROM cards, and from GPS sources, which is analyzed by a computer and then                           
              provided to the operator as needed to expedite the “navigation” of the vehicle, which                       
              includes its safety with regard to vehicles in close proximity as well as its path from one                 
              point to another.  The operator can interact with the system by entering voice or keyed                     
              commands, and the system provides information and verbal response.  Claim 1 sets forth                      









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