Appeal No. 2004-1307
Application No. 09/843,724
Claim 27
Willner discloses a keyboard having secondarily labeled keys
other than a NumLock key (figure 2B).
The examiner argues (answer, pages 20-21):
While the modified device of Olsson and Willner do not
teach “a secondarily labeled NumLock key”, Willner
teach[es] the use of a plurality of keys with a variety
of secondarily labeled function[s] (see Figure 2B of
Willner that [is] reproduced below). In view of this
teaching, it is clear that the selection for a key to
have a specific secondarily labeled function such as
NumLock can be determined through obvious routine
experimentation so as to provide more convenience to
the user as typing aids.
The examiner has not established that Olsson and Willner
themselves would have indicated to one of ordinary skill in the
art that a secondarily labeled NumLock key would provide more
convenience to the user as a typing aid, or that those references
would have led one of ordinary skill in the art to a NumLock key
through routine experimentation. Consequently, the record
indicates that the motivation relied upon by the examiner for
including a secondarily labeled NumLock key in Olsson’s keyboard
comes from the appellants’ disclosure rather than coming from the
applied prior art and, therefore, that the examiner used
impermissible hindsight in rejecting the appellants’ claim 27.
See W.L. Gore & Assocs. v. Garlock, Inc., 721 F.2d 1540, 1553,
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