Ex Parte ROST - Page 5




         Appeal No. 2002-2128                                                       
         Application No. 08/793,984                                                 


         accessible memory cards, the bulk of the disclosure of Watanabe is         
         directed to solving security problems attendant to systems with            
         independently accessible memory cards.  It is apparent from a              
         reading of Watanabe that Watanabe’s solution to the access security        
         problem, in direct contrast to Appellant’s claimed independent             
         access feature, is to require that a first memory card can not be          
         accessed without the presence and authorization of a second memory         
         card.  A prior art reference must be considered in its entirety,           
         i.e., as a whole, including portions that would lead away from the         
         claimed invention.  See  W.L. Gore & Associates, Inc. V. Garlock,          
         Inc., 721 F.2d 1540, 1548, 220 USPQ 303, 311 (Fed. Cir. 1983), cert        
         denied, 469 U.S. 851 (1984).  Given the deficiencies in the                
         disclosure of Watanabe, it is our view that any suggestion to              
         modify Watanabe to arrive at Appellant’s claimed invention could           
         not come from any teaching in Watanabe but, rather, only from              
         Appellant’s own disclosure.                                                
              We are further of the view that even assuming, arguendo, the          
         existence of personal data archive systems with memory devices             
         having independent accessibility, there is no indication from the          
         Examiner as to how and in what manner the Watanabe reference would         
         be modified to arrive at the particulars of Appellant’s invention          
         as set forth in independent claims 43 and 84.  In order for us to          
                                         5                                          





Page:  Previous  1  2  3  4  5  6  7  8  Next 

Last modified: November 3, 2007