Appeal No. 2005-2174
Application No. 10/060,614
combination stems from (1) Boggess’ stated desire to provide a product display
designed to attract the attention of customers and (2) Sernovitz’s disclosure of a product
display generally similar to that of Boggess comprising lighting or illumination having
self-evident attention-drawing characteristics. One of ordinary skill in the art would have
readily appreciated the Sernovitz illumination feature as entirely consistent with, and in
furtherance of, the stated aims of Boggess.
The appellant’s arguments (see, for example, pages 3, 4, 9, 10, 21 and 24 in the
main brief) that Boggess and Sernovitz are incompatible and mutually exclusive and
would not have suggested, and in fact teach away from, the examiner’s combination
have no factual basis in the fair teachings of these references. While the appellant’s
observation that neither reference teaches all of the limitations in the appealed claims is
accurate, where the rejection is based upon the teachings of a combination of
references, non-obviousness cannot be established by attacking the references
individually (In re Merck & Co., Inc., 800 F.2d 1091, 1097, 231 USPQ 375, 380 (Fed.
Cir. 1986)).
The argument (see, for example, pages 18 and 19 in the main brief) that
Boggess and Sernovitz do not address the problems solved by the claimed invention is
also unpersuasive. According to the appellant, the key problems in this regard involve
determining a way to “(a) construct and provide a point-of-purchase sign which is both
combination of Boggess and Sernovitz.
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