Appeal No. 2004-1598
Application No. 09/250,878
plugging the related modules between the engine control module
and its memory module (col. 5, lines 11-20). This arrangement,
relied on by the Examiner (answer, page 9) as the reason for
combining the references, merely suggests that the modules may be
easily installed within the existing connection ports of the
vehicle. Posner, in fact, contains no suggestion of adding the
modules as an additional control unit to the anti-theft system of
Bachhuber ‘329 which is queried for its identification by the
central unit during the authentication process.
While one of the control devices of Bachhuber ‘329 may be
capable of being pluggable as required by claim 1, there must be
a suggestion or motivation in the references to do so. The
Examiner provides no such suggestion, nor do we find any
teaching, suggestion, or reason in the prior art to select parts
of the prior art and combine them in the manner required by the
claims. See Karsten Mfg. Corp. v. Cleveland Gulf Co., 242 F.3d
1376, 1385, 58 USPQ2d 1286, 1293 (Fed. Cir. 2001) (“In holding an
invention obvious in view of a combination of references, there
must be some suggestion, motivation, or teaching in the prior art
that would have led a person of ordinary skill in the art to
select the references and combine them in the way that would
produce the claimed invention.”). The fact that the pluggable
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