Appeal No. 2005-0121
Application No. 10/074,154
has a planar or surface area substantially smaller in size than the planar or surface area of
Murphy’s opaque top layer (mouse tracking area 20). The examiner nonetheless submits that
Murphy [suggests] the number of compartments could be any (therefore could be
just one, see column 2 lines 60-61 and column 3 lines 33-36). Hence, it would
have been obvious for one of ordinary skill in the art at the time of the invention
to use only one tray with an area substantially equal to the area of the top surface
when only [the] storage tray for the notepad is needed by the user so as to
increase the storage area for the notepad or other paper, simplify the
manufacturing process and therefore reduce the cost. It has been held to be
within the general skill of a worker in the art to make plural parts unitary as a
matter of obvious engineering choice [answer, page 6; also see page 7 in the
answer].
Murphy, however, would not have suggested modifying the mouse pad and item holder
disclosed therein so as to have only one compartment and tray. The portions of the Murphy
disclosure cited by the examiner simply do not support a conclusion to the contrary. Instead,
Murphy actually touts the benefits of a mouse pad and item holder having a plurality of
compartments for holding a variety of different items. Moreover, even if the artisan would have
found it obvious to provide the Murphy mouse pad and holder with only a single compartment
and tray which holds paper, the reference provides no suggestion to size such tray and paper so
as to result in a surface on which information is written having a planar or surface area
substantially equal in size to the planar or surface area of the opaque top layer.
Hence, Murphy does not justify the examiner’s conclusion that the differences between
the subject matter recited in claims 1 and 5 and the prior art are such that the subject matter as a
whole would have been obvious at the time the invention was made to a person having ordinary
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