Appeal No. 2005-0321
Application No. 09/575,776
USPQ2d 1430, 1434 (Fed. Cir. 2002). In addition, our reviewing court stated in
In re Lee, 277 F.3d at 1343, 61 USPQ2d at 1433, that when making an
obviousness rejection based on combination, “there must be some motivation,
suggestion or teaching of the desirability of making the specific combination that
was made by Applicant” (quoting In re Dance, 160 F.3d 1339, 1343, 48 USPQ2d
1635, 1637 (Fed. Cir. 1998)).
The examiner states on page 7 of the answer “[w]hat Silverbrook did not
disclose, is that the device is for processing the only [sic, only the] file directory
information.” We concur and find no disclosure in Silverbrook that teaches only
displaying the file directory information. The examiner states, on page 5 of the
answer, that “it would have been obvious ... to view any desirable information on
said visual display, including only file directory information.” As stated supra
independent claims 1, 6, 10 and 13 are directed to a device that operates only
with file directory information. We find that Silverbrook teaches a system which
permits editing of both audio and video data. (See abstract and column 1, lines 5-
10). We find that modifying Silverbrook to only operate on the file directory
information would not permit the device to perform editing of files. Thus, we do
not find that Silverbrook provides any motivation, suggestion or teaching to
modify the device as asserted by the examiner.
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