Appeal No. 2005-1226 Page 5
Application No. 10/151,179
See In re Dembiczak, 175 F.3d 994, 999, 50 USPQ2d 1614, 1617 (Fed. Cir. 1999).
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. See In
re Kotzab, 217 F.3d 1365, 1370, 55 USPQ2d 1313, 1316-17 (Fed. Cir. 2000).
The examiner’s reliance on In re Gulack, 703 F.2d 1381, 1385, 217 USPQ 401,
404 (Fed. Cir. 1983) is also misplaced. In this instance, the content of the symbols and
their relative positions on the clock/watch face or sticker sheet in appellants’ claimed
invention, like the content and relative positioning of the symbols etched or placed on
the sectors 44 of Kim’s device, are in fact functionally related to the clock/watch face or
sticker sheet (the substrate) in that they indicate to the user the time in other cities. The
placement of the symbol for a second city whose time is behind that of a first city
clockwise, as recited in appellants' claims, rather than counterclockwise, as taught by
Kim, relative to the symbol for the first city, substantially alters the manner in which the
device is used to indicate time in different cities to the user, as explained above.
In light of the above, it appears that the examiner’s determination of the
obviousness of the subject matter of appellants’ claims in view of Kim stems from
hindsight impermissibly gleaned from the appellants’ application. It follows that the
rejection of claims 1, 2, 4-11 and 32 as being unpatentable over Kim cannot be
sustained.
CONCLUSION
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