Appeal No. 2005-0342
Application No. 09/758,787
fall together and, in the argument under paragraph (c) (8) of this
section, appellant explains why the claims of the group are believed
to be separately patentable. Merely pointing out differences in what
the claims cover is not an argument as to why the claims are
separately patentable.
Accordingly, we will consider the claims in two groups. Group 1 consists
of claims 1, 4, 5 and 7 through 24, and we will treat claim 1 as representative of
that group. Group 2 consists of claim 27.
Rejection of Claims in Group 1 (Claims 1, 4, 5, 7 through 24)
Appellant argues, on page 6 of the brief, that “there is no suggestion or
motivation to modify Suzuki to incorporate the floating point calculations of
Neslon because doing so would render Suzuki unsatisfactory for its intended
purpose.” Appellant cites Suzuki column 18 lines 57-67 and reasons that “Suzuki
is explicitly directed to a processor for performing lighting source calculations
using a format other than floating point.” Appellant also cites column 2 of
Suzuki, which discusses the prior art, to show that “Suzuki is explicitly motivated
by a desire to eliminate floating point calculations in a lighting calculation unit of a
graphics processor.” Thus, on page 7 of the brief, appellant concludes that the
rejection is improper as there is no proper motivation to combine the references.
We disagree. Appellant, on pages 6 of the brief, cites In re Gordon
733F.2d 900, 221 USPQ 1125 (Fed Circuit 1984), for the proposition that “when
a proposed modification would render the prior art invention being modified
unsatisfactorily for it’s intended purpose, then there is no suggestion or
motivation . . . .” We find that the intended purpose of the device taught by
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