Appeal No. 2001-2293
Application No. 08/984,602
In the embodiment shown in Figures 5A, 5B, and 6, described in columns 6
through 8 of the reference, a projector 118 operates as a substitute for a computer
monitor screen by projecting a picture onto board 110. A camera 114, in combination
with a computer, determines the position of pointing device 16. As in the first
embodiment, pointing device 16 comprises an operation button 34 and an LED 36. The
pointing device contains an identifier which corresponds to an object stored on the
computer.
However, the examiner has not pointed to support in the evidence before us
(e.g., in the references applied against the claims) for the asserted reasons for
combining the teachings so as to meet the terms of the instant claims. The offered
reasons for the combination appear to arise from appellant’s teachings in the instant
specification (e.g., p. 9, l. 20 - p. 10, l. 4), rather than from the prior art. The
“modulation” of the light in Siio is for providing an identifier for a particular pointing
device. See Siio col. 4, ll. 49-54 and col. 6, ll. 48-53; Fig. 3B. The proposed
combination thus appears to be based on improper hindsight reconstruction of
appellant’s invention, rather than setting forth a case for prima facie obviousness based
on objective teachings of the prior art.
Moreover, even if there were suggestion from the prior art to combine the
references as contemplated by the rejection, we agree with appellant that not all
limitations of the instant claims are taught by Iura and Siio.
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