Appeal No. 2002-1753
Application No. 09/243,451
more effective to apply to the parking guidance and management system” (answer-
page 4).
Appellants’ position is that there is no basis at all in the Becker reference for its
use as a teaching of advertising because the reference nowhere mentions or suggests
an advertising display and that it would be inappropriate to include advertising in
Becker’s display because it involves a display for directing emergency personnel to a
trouble scene and it is also directed to a very limited audience.
The examiner does not dispute appellants’ arguments as to what Becker shows .
The examiner only cites the graphics windows of Becker and states that each of the
windows “can” be used to display advertising “such as marquee display which rolling in
the message windows 34 and 36 or banner-headline on the main graphics window 26
to display any advertising” [sic] (answer-page 7).
The examiner’s reasoning here is flawed. Merely because one “can” do what an
applicant has done is not a proper basis on which to base an obviousness rejection.
One must show some teaching in the prior art or some reason, based on the
experience of skilled artisans, why the artisan would have been led to make a
modification which would have resulted in the claimed subject matter. Such reason
much stem from some teachings, suggestions or implications in the prior art as a whole
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