Appeal No. 2006-0837
Application No. 10/081,446
information about how to recover from the failure.’” One cannot show nonobviousness by
attacking references individually where the rejections are based on combinations of references.
See In re Keller, 642 F.2d 413, 426, 208 USPQ 871, 882 (CCPA 1981); In re Merck & Co.,
800 F.2d 1091, 1097, 231 USPQ 375, 380 (Fed. Cir. 1986).
Appellants also argue that Ben-Natan’s error message “does not provide the user with
information about how to recover from the failure.” We disagree. Again, the Examiner
correctly points out at pages 8-9 of the answer that the error report “Could not open file
expenses.xls – corrupted” teaches the limitations of the claim. We do not agree with Appellants’
dismissal of this teaching at page 2 of the reply brief. The answer to Appellants’ question (“how
is the user to uncorrupt the file?”) would be, as every artisan knows, to replace the corrupted file
with an archived file. Given that archiving is a standard business practice, we believe the prior
art error report would readily show to an artisan how to recover from the failure.
Further, Appellants argue that there is no motivation to combine the references. We
disagree. In addition to a specific suggestion to combine found in the references, we remind
Appellants that the Examiner may find a motivation to combine prior art references in the nature
of the problem to be solved. Ruiz v. A.B. Chance Co., 357 F.3d 1270, 1276, 69 USPQ2d 1686,
1690 (Fed. Cir. 2004). See also Pro-Mold & Tool Co. v. Great Lake Plastic Inc., 75 F.3d
1568, 1573, 37 USPQ2d 1626, 1630; In re Huang, 100 F.3d 135, 139 n.5; 40 USPQ2d 1685,
1688 n.5 (Fed. Cir. 1996).
The Burrows patent teaches within the context of a computer aided design (CAD) tool
that an error can occur and messages must be generated about the error (column 1, line 14). The
5
Page: Previous 1 2 3 4 5 6 7 8 9 Next
Last modified: November 3, 2007