Appeal No. 2003-1184
Application No. 09/737,344
We refer to the Final Rejection (Paper No. 7) and the Examiner’s Answer (Paper
No. 13) for a statement of the examiner’s position and to the Brief (Paper No. 11) and
the Reply Brief (Paper No. 14) for appellants’ position with respect to the claims which
stand rejected.
OPINION
Appellants argue that the motivation to combine the references is based solely
on the subjective opinion of the examiner. Appellants’ arguments for patentability thus
rest on whether there is sufficient evidence to support the examiner’s finding of a
motivation to combine.1
There is no express suggestion in the references to make the proposed
combination. That is, Numazaki does not say that the PDA watch may have an input
dial. Wicks does not say that the input dial may be used on a PDA watch. However,
the suggestion to combine need not be express and “may come from the prior art, as
filtered through the knowledge of one skilled in the art.” Brown & Williamson Tobacco
Corp. v. Philip Morris Inc., 229 F.3d 1120, 1125, 56 USPQ2d 1456, 1459 (Fed. Cir.
2000) (quoting Motorola, Inc. v. Interdigital Tech. Corp., 121 F.3d 1461, 1472, 43
USPQ2d 1481, 1489 (Fed. Cir. 1997)).
1 The presence or absence of a motivation to combine references in an obviousness
determination is a pure question of fact. In re Gartside, 203 F.3d 1305, 1316, 53 USPQ2d 1769, 1776
(Fed. Cir. 2000).
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