Reexamination Control No. 90/005,742
Patent 5,253,341
1 references results in a product or process that is more desirable, for
2 example because it is stronger, cheaper, cleaner, faster, lighter, smaller,
3 more durable, or more efficient.
4
5 DyStar Textilfarben GmbH v. C.H. Patrick Co., 464 F.3d 1356, 1368, 80 USPQ2d 1641, 1651
6 (Fed. Cir. 2006).
7 The examiner does not deny that Dr. Koopman's background and experience (First
8 Koopman Decl. paras. 1-4) qualify him under Kumho Tire Co. v. Carmichael, 526 U.S. 137,
9 50 USPQ2d 1177 (1999), and Daubert v. Merrell Dow Pharmaceuticals, Inc., 509 U.S. 579,
10 27 USPQ2d 1200 (1993), to testify about the knowledge and level of ordinary skill of persons
11 working in the field of the invention as of appellant's filing date. However, much of his
12 testimony regarding the obviousness rejections misses the mark because it fails to address the
13 rationale and merits of those rejections, namely, (1) whether one skilled in the art would have
14 been motivated to combine the teachings of the primary and secondary references for the reasons
15 proposed by the examiner and (2) whether the combined teachings satisfy the language of the
16 rejected claims. Specifically, his testimony fails to take into account that a rejection for
17 obviousness can be based on combining reference teachings so as to solve a problem different
18 from the problem solved by the applicant. See In re Kahn, 441 F.3d 977, 988, 78 USPQ2d 1329,
19 1337 (Fed. Cir. 2006) (“[T]he law does not require that the references be combined for the
20 reasons contemplated by the inventor.") (quoting In re Beattie, 974 F.2d 1309, 1312, 24 USPQ2d
21 1040, 1042 (Fed. Cir. 1992)). Instead, Dr. Koopman argues the nonobviousness of combining
22 the reference teachings in order to achieve appellant's disclosed purpose of providing a server
23 capable of handling AV (audio visual) data of the type disclosed in the '341 patent (including an
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