Ex parte MOSKOWITZ et al. - Page 5




                Appeal No. 1999-1930                                                                                                    
                Application 08/907,859                                                                                                  

                Assocs., Inc. v. Garlock, Inc. 721 F.2d 1540, 1551-53, 220 USPQ 303, 311-13.  In                                        
                addition, our reviewing court requires the Patent and Trademark Office (PTO) to make                                    
                specific findings on a suggestion to combine prior art references.  In re Dembiczak, 175                                
                F.3d 994, 1000-01, 50 USPQ2d 1614, 1617-19 (Fed. Cir. 1999).                                                            
                        We find that the record provides no reason why one of ordinary skill in the art would                           
                have wanted to make use of a flashlight which is illuminated during a power outage in a                                 
                system which is directed to charging of a stand alone battery as well as a battery in a                                 
                portable unit, particularly when the stand alone battery is used to power the base unit                                 
                associated with the portable unit.  The motivation provided by the Examiner fails to                                    
                address why the skilled artisan would wish to modify the system of Dormer to change the                                 
                system associated with rechargeable batteries from one having a base and portable units,                                
                both of which require a power source, to a system in which the flashlight is the sole element                           
                requiring power.                                                                                                        















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