Ex Parte Dunsmore et al - Page 4




               Appeal No. 2003-1184                                                                                               
               Application No. 09/737,344                                                                                         

                      The examiner finds (Answer at 4) that the input dial of Wicks had the obvious                               
               advantage of allowing a user to input and transmit a virtually unlimited range of                                  
               messages using the character dial.  The examiner concludes that it would have been                                 
               obvious to one of ordinary skill in the art at the time the invention was made to use a                            
               character dial for input to a PDA watch for the purpose of effecting an unlimited number                           
               of inputs, thereby increasing the versatility and reliability of the watch device.                                 
                      The text of Wicks at column 2, lines 5 through 9 provides support for the                                   
               examiner’s finding of motivation to combine the references.  Wicks discloses that the                              
               character dial allows the pager user to input and transmit a virtually unlimited range of                          
               messages.  We agree with the examiner that the artisan would have recognized the                                   
               similarity in the problems attendant to inputting alphanumeric characters into a pager                             
               and inputting alphanumeric characters into a PDA watch.  In our view, the examiner’s                               
               opinion reflects the artisan’s understanding of the references -- i.e., what the teachings                         
               would have meant to one skilled in the art -- rather than substituting for objective                               
               evidence in support of the ultimate conclusion of obviousness.                                                     
                      Appellants submit an apparent fall-back position in the Reply Brief.  Appellants                            
               note that Numazaki teaches that the PDA watch has a non-contact input device, and                                  
               conclude that the artisan would not have been motivated to use an input dial as taught                             
               by Wicks.  However, the rejection (e.g., Answer at 3-4) makes clear that Numazaki is                               
               relied upon only for its showing of the basic components of a PDA watch, not for its                               
               teachings with respect to the particular input device.  “‘The use of patents as references                         
                                                               -4-                                                                





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