Appeal No. 2004-1307
Application No. 09/843,724
Ochiai, 71 F.3d 1565, 1572, 37 USPQ2d 1127, 1133 (Fed. Cir.
1995), “reliance on per se rules of obviousness is legally
incorrect and must cease.” To set forth a prima facie case of
obviousness the examiner must establish that the applied prior
art itself would have fairly suggested, to one of ordinary skill
in the art, the desirability of the examiner’s proposed
modification of the prior art, see Fritch, 972 F.2d at 1266,
23 USPQ2d at 1783-84, and the examiner has not done so.
Consequently, we reverse the rejection of claim 7.
Claim 15
The examiner points out that Olson’s keyboard has a NumLock
key and a plurality of keys with secondary mode, and argues that
it would have been obvious to one of ordinary skill in the art to
make one of Olsson’s Tab key and Equals key a secondarily labeled
NumLock key because it has been held that rearranging parts of an
invention involves only routine skill in the art (answer,
pages 5-6 and 18). This argument is not persuasive for the
reason given above regarding the rejection of claim 7. We
therefore reverse the rejection of claim 15 and claims 17-21 that
depend directly or indirectly therefrom.
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