Reexamination Control No. 90/005,742
Patent 5,253,341
1 claim, not whether it would have been obvious to combine the teachings Walter and Kirchner in
2 a manner which yields appellant's disclosed invention.
3 We agree with the examiner that in view of Kirchner's teachings about the desirability of
4 mobility and portability, it would have been obvious to make Walter's receiving stations mall
5 enough to be conveniently transported from one location to another. The rejection of claim 103
6 for obviousness over Walter in view of Kirchner is therefore affirmed.
7 (3) Claim 103 – obvious over Walter in view of Dr. Koopman's testimony?
8 As an alternative ground for the obviousness of making Walter’s data receiving station
9 mobile, the examiner argues that “[i]t is generally recognized that mobility is a positive aspect of
10 the computer art as it allows for portability.” 3d Action at 102 (unnumbered para.); Final Action
11 at 254, para. 39. As support for this assertion, the examiner cites the following testimony given
12 by Dr. Koopman in response to the previous (later withdrawn) § 112, first paragraph, rejection of
13 claim 103 for lacking written description support:
14 40. As an additional piece of support for the system [disclosed in
15 the '341 patent] being mobile (in response to examiner ¶ 16)[,] Rozmanith
16 Col. 1 line 32 states that the EUS "could be conveniently transported." In
17 1991 this would have been readily implemented using a transportable,
18 "mobile", computer such as a laptop computer just as would be possible
19 today. Mobile laptop computers had been commonly in use since at least
20 the introduction of the Grid Compass in 1983, so this was widely known
21 technology.
22
23 1st Koopman Decl. at 24, para. 40. Dr. Koopman denies that this testimony constitutes an
24 admission that it would have been obvious to substitute a mobile unit “for any arbitrary
25 computer.” 2d Koopman Decl. at 192-94, paras. 422 and 424. This mischaracterizes the
26 examiner’s position, which relies on the testimony as an admission that it was common practice
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