Appeal No. 2004-2043
Application 09/312,919
An obviousness analysis commences with a review and
consideration of all the pertinent evidence and arguments. “In
reviewing the [E]xaminer’s decision on appeal, the Board must
necessarily weigh all of the evidence and argument.” Oetiker,
977 F.2d at 1445, 24 USPQ2d at 1444. “[T]he Board must not only
assure that the requisite findings are made, based on evidence of
record, but must also explain the reasoning by which the findings
are deemed to support the agency’s conclusion.” In re Lee, 277
F.3d 1338, 1344, 61 USPQ2d 1430, 1434 (Fed. Cir. 2002).
A) With respect to independent claim 1, Appellants argue at
page 5 of the brief, “Karasawa teaches away from using a display
capable of ‘displaying a soft key’” because Karasawa teaches “(1)
the apparatus is embodied in a wristwatch or compact electronic
calculator and (2) the display section is separate from the key-
operation section.” We find Appellants’ argument to be
unpersuasive. We find that Karasawa’s preferred embodiment does
not constitute a teaching away. Disclosed examples and preferred
embodiments do not constitute a teaching away from a broader
disclosure or non-preferred embodiments. In re Susi, 440 F.2d
442, 446, 169 USPQ 423, 426 (CCPA 1971).
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