Appeal No. 2006-1359
Application No. 10/098,417
references [emphasis added].
We further note that appellant appears to be arguing that because the Inohara reference
is silent with respect to Network Attached Storage (NAS) that the Pothapragada and Inohara
references cannot be combined. We disagree. In particular, we note that appellant has made
an implicit admission in the brief that the Pothapragada and Inohara references are analogous
references by acknowledging that both references are “in the same technological art” [brief,
page 3, ¶4]. The Court of Appeals for the Federal Circuit has set forth two criteria for
determining whether prior art is analogous: (1) whether the art is from the same field of
endeavor, regardless of the problem addressed, and (2) if the reference is not within the field
of the inventor's endeavor, whether the reference still is reasonably pertinent to the particular
problem with which the inventor is involved. In re Kahn, 441 F.3d 977, 987, 78 USPQ2d
1329, 1336 (Fed. Cir. 2006), citing In re Oetiker, 977 F.2d 1443, 1447, 24 USPQ2d 1443,
1445-6 (Fed. Cir. 1992). Accordingly, because both the Pothapragada and Inohara
references are directed to data storage and retrieval on a network, we find that they are
analogous references by virtue of being from the same field of endeavor.
We note that to establish a prima facie case of obviousness, the examiner, as finder of
fact, must meet three basic criteria: Firstly, there must be some suggestion or motivation,
either in the references themselves or in the knowledge generally available to one of ordinary
skill in the art, to modify the reference or to combine reference teachings. In re Rouffet, 149
F.2d 1350, 1357-59, 47 USPQ2d 1453, 1456 (Fed. Cir. 1998). Secondly, there must be a
reasonable expectation of success. See Medchem S.A. v. Rolabo, S.L., 437 F.3d 1157, 1165
-7-
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 13 Next
Last modified: November 3, 2007