Appeal No. 2002-1710 Page 8
Application No. 09/023,441
Here, the rejection is based on a combination of Sasaki and Kashiwazaki. The
examiner relies on Sasaki, rather than Kashiwazaki, to teach storing an operating
system in a printer. Therefore, we are unpersuaded by the appellants' argument about
the number of operating systems that Kashiwazaki stores in a printer.
2. Combining Sasaki and Kashiwazaki
The examiner asserts, "it would have been obvious . . . to provide the printing
system of Sasaki with a download operating system as taught by Kashiwazaki et al.,"
(Examiner's Answer, § 11, ¶ 1), "to allow the system of a Sasaki to download a different
operating system, thereby improving the versatility of the system, by allowing to process
jobs in different data formats." (Id.) The appellants argue, "none of the cited references
provide any motivation for the combination suggested by the Examiner." (Appeal Br. at
11.)
"The presence or absence of a motivation to combine references in an
obviousness determination is a pure question of fact." In re Gartside, 203 F3d 1305,
1316, 53 USPQ2d 1769, 1776 (Fed. Cir. 2000) (citing In re Dembiczak, 175 F.3d 994,
1000, 50 USPQ2d 1614, 1617 (Fed. Cir. 1999). "'[T]he question is whether there is
something in the prior art as a whole to suggest the desirability, and thus the
obviousness, of making the combination.'" In re Beattie, 974 F.2d 1309, 1311-12, 24
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