Appeal No. 2006-1359
Application No. 10/098,417
computers to exchange information having a plurality of file formats over the World Wide
Web (WWW) without requiring the user to manually perform the file conversions [col. 1,
lines 1-22, col. 4, lines 38-43].
We consider first the examiner’s rejection of independent claim 1 that stands rejected
under 35 U.S.C. § 103(a) as being unpatentable over the teachings of Pothapragada in view
of Inohara.
I. Appellant notes that the examiner has relied upon the secondary Inohara reference as
allegedly providing a suggestion to modify the primary Pothapragada reference to include all
of the features recited in the body of the claims [brief, page 3, ¶2]. Appellant argues that
Inohara merely teaches a file format conversion method, and not a file format conversion in a
Network Attached Storage (NAS) system as recited in claim 1 [id.]. Appellant further argues
that neither the term “network-attached storage” nor its abbreviation “NAS” appears in
Inohara nor has anything been cited by the examiner in either Pothapragada or Inohara
suggesting file format conversion of any type in an NAS device [id.]
The examiner responds that appellant is attacking the references individually where the
rejections are based upon the combination of Pothapragada, as modified by Inohara [answer,
page 8, ¶1]. As correctly noted by the examiner [id.], the Court of Appeals for the Federal
Circuit has determined that one cannot show nonobviousness by attacking references
individually where the rejections are based on combinations of references. In re Merck &
Co., Inc., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986). We note that in the instant case
the examiner’s rejection is based upon the combination of the Pothapragada and Inohara
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