Appeal No. 2001-1602
Application No. 08/973,003
motivation to do so found either explicitly or implicitly in the
references themselves or in the knowledge generally available to
one of ordinary skill in the art. The Federal Circuit has stated
that, "[t]he mere fact that the prior art may be modified in the
manner suggested by the Examiner does not make the modification
obvious unless the prior art suggested the desirability of the
modification." In re Fritch, 972 F.2d 1260, 1266 n.14, 23 USPQ2d
1780, 1783-84 n.14 (Fed. Cir. 1992), citing In re Gordon,
733 F.2d 900, 902, 221 USPQ 1125, 1127 (Fed. Cir. 1984).
We agree with Appellant that the Examiner has failed to
point to any teachings in Danish that would suggest the
desirability of the modification to the Danish keyboard to
achieve the limitations of claims 1 and 7. Although we agree
with the Examiner that Danish suggests the modification of its
keypad, we do not find any suggestion in Danish to modify its
keypad to that of the claimed invention, wherein generation of
alpha-characters is limited to always depressing exactly two
adjacent keys.
The first step in our analysis is determining the scope of
Appellant's claim. As the Federal Circuit has pointed out, "the
name of the game is the claim." In re Hiniker Co., 150 F.3d
1362, 1369, 47 USPQ2d 1523, 1529 (Fed. Cir. 1998).
5
Page: Previous 1 2 3 4 5 6 7 8 9 Next
Last modified: November 3, 2007