Appeal No. 2006-0944
Application No. 09/895,584
communication OR the programming of the operator. Thus, it is clear to us that claims 1 and 11
do, indeed, require actuation in different ways to produce different results.
Nothing of the sort is taught or suggested by either one of Erekson or Goldstein.
However, even if we interpreted the disclosure of these references to teach the elements
of the claims as alleged by the examiner, which we do not, we find the examiner’s rationale for
combining the references to sound suspiciously like hindsight. The examiner’s specific rationale,
viz., “in order to for the said remote device to be functionally capable to select a plurality of
devices to communicate within an environment to further program the said icon to communicate
the said selected device” [sic] [Paper No. 4, page 3] is a very general statement with nothing
concrete to explain why the skilled artisan, viewing these references, would have sought to
combine them.
Appellants appear to make a reasonable assessment (reply brief-page 4) when arguing
that Erekson does not display an icon unless a device responds to a broadcast, so it appears that
an artisan would find no reason to modify this teaching by Goldstein which, the examiner
alleges, employs icons which are actuated in order to connect to the devices. The examiner has
no convincing retort to appellants’ argument.
Accordingly, we will not sustain the rejection of claims 1-9 and 11-20 under 35 U.S.C.
§103 as unpatentable over Erekson and Goldstein. Darbee, applied in addition to Erekson and
Goldstein with regard to claims 8 and 18, does not provide for the deficiencies of the primary
references.
-6-
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 Next
Last modified: November 3, 2007