Appeal No. 2004-1641
Application No. 09/764,388
Furthermore, the examiner is correct that Garland teaches
that input device 3 may be a keyboard, mouse, electronic pen,
etc., or a combination thereof. See column 1, lines 66 and 67 of
Garland. On page 5 of the brief, appellants state “[a]lthough a
mouse, a digitizer and a keyboard can be used to input data to a
computer, an inventor developing an idea does not necessarily
think of each as interchangeable just because they can all be
used to input data.” We disagree with this statement, in view
of the teaching of Garland, that, in fact, indicates that “input
device 3 may be a keyboard, mouse, electronic pen, etc., or a
combination thereof.” We also note that in order for a prima
facie case of obviousness of the claimed invention to be
established, the prior art as applied must be such that it would
have provided one of ordinary skill in the art with both a
suggestion to carry out appellants’ claimed invention and a
reasonable expectation of success in so doing. See In re Dow
Chem. Co., 837 F.2d 469, 473, 5 USPQ2d 1529, 1531 (Fed. Cir.
1988). “Both the suggestion and the expectation of success must
be founded in the prior art, not in the applicant’s disclosure.”
Id. Garland provides the teaching that a mouse and an
electronic pen, e.g., are interchangeable. Hence, both a
suggestion to carry out appellants’ claimed invention and a
reasonable expectation of success in so doing is found in the
prior art of Garland. Appellants’ arguments do not convince us
that substitution of the mouse in Garland for the stylus of
Kiyohara amounts to an unreasonable expectation of success. The
teaching in Garland provides sufficient motivation to modify
Kiyohara as suggested by the examiner.
In view of the above, we therefore affirm the 35 U.S.C.
§ 103 rejection of claims 1, 3, 7, 8, and 24 as being
unpatentable over Kiyohara in view of Garland.
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