Appeal No. 2001-1862
Application No. 09/102,044
agree with appellants that the examiner’s rejection tends to dissect the claims into
individual elements and show that those elementary building blocks were “old and well-
known” and that they may be used to build an invention. We disagree with the
examiner’s treatment of the claimed invention in the rejection. As the examiner
addresses each of the elements of the claims, the examiner provides a conclusion that
it would have been obvious to one of ordinary skill in the art to provide the card with the
“old and well-known” feature. While in a general sense each individual modification
may be obvious by itself, this is not the correct test for obviousness. The examiner
does not address the motivation for the skilled artisan to modify the broad teachings of
Your Choice, and the examiner does not support each of the modifications with a
convincing line of reasoning to modify Your Choice as it has been previously modified
by the other modifications. While we agree with the examiner that each of the
individual modifications of Your Choice does not seem to significantly change the prior
art prepaid card, there comes a point when even the skilled artisan must stop and ask
the question “are all the individual modifications in the combination obvious?” Here, we
do not find that the examiner has addressed the totality of the modifications.
We find that appellants finally argue, in the Reply Brief at pages 2-3, that the
examiner has not provided any objective or extrinsic evidence of these Official Notices
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