Appeal No. 2002-1210
Application No. 09/483,018
connection permits dual paths for switching balanced audio
signals or bidirectional streams of data (col. 4, lines 14-17),
we disagree with the Examiner that there is any suggestion for
its combination with Lyon and Petit.
It is well settled that it is the teachings of the prior art
taken as a whole which must provide the motivation or suggestion
to combine the references. Fritch, 972 F.2d at 1266, 23 USPQ2d
at 1783-84 (Fed. Cir. 1992) and Uniroyal, Inc. v. Rudkin-Wiley
Corp., 837 F.2d 1044, 1051, 5 USPQ2d 1434, 1438 (Fed. Cir. 1988).
As the court in Uniroyal, 837 F.2d at 1051, 5 USPQ2d at 1438
stated, "it is impermissible to use the claims as a frame and the
prior art references as a mosaic to piece together a facsimile of
the claimed invention."
Absent Appellant’s own disclosure, we can think of no reason
why one of ordinary skill in this art would have been motivated
to combine the teachings of Petit and Hughes with Lyon as the
examiner has proposed. Here, the teachings of Lyon are directed
to a larger scale switching system which is different from that
of Petit and Hughes and, in our view, the examiner has
impermissibly relied upon the appellant’s own disclosure in
arriving at a conclusion of obviousness. For example, what the
Examiner relies on as the motivation to combine, in col. 2, lines
7
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 Next
Last modified: November 3, 2007