Appeal No. 2004-2307
Application No. 09/331,756
displayed portions of broadcast television signals (i.e., in a vertical blanking interval) in
the analog embodiment.
Reading a claim on separate embodiments described in a reference, while not
consistent with a finding of anticipation, could support a rejection for obviousness.
Whether there is suggestion to combine elements or steps of different embodiments is
an inquiry under obviousness, rather than anticipation. “Even when obviousness is
based on a single prior art reference, there must be a showing of a suggestion or
motivation to modify the teachings of that reference.” In re Kotzab, 217 F.3d 1365,
1370, 55 USPQ2d 1313, 1316-17 (Fed. Cir. 2000).
In this case, however, we find no suggestion in Nemirofsky for combining the
relevant portions of the distinct embodiments such that the requirements of instant claim
38 are met. Indeed, it appears that such a combination of the digital and analog
embodiments of the reference would be, at best, impractical.
The remainder of the independent claims contain similar limitations to those of
claim 38 that we have addressed. The additional references applied in the § 103
rejections do not remedy the basic deficiency of Nemirofsky as applied against the base
claims. We thus do not sustain any of the rejections of the claims under 35 U.S.C.
§ 102 and 103.
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