Ex Parte Minagawa - Page 8




                 Appeal No. 2006-1359                                                                                                                          
                 Application No. 10/098,417                                                                                                                    

                 77 USPQ2d 1865, 1870  (Fed. Cir. 2006); In re Merck & Co., Inc., 800 F.2d 1091, 231                                                           
                 USPQ 375 (Fed. Cir. 1986).   Finally, the prior art references when combined must teach or                                                    
                 suggest all the claim limitations.  See In re Gulack, 703 F.2d 1381, 1385 n. 9, 217 USPQ                                                      
                 401, 403 n. 9 (Fed. Cir. 1983);  In re Royka, 490 F.2d 981, 180 USPQ 580 (CCPA 1974).                                                         
                 (obviousness requires a suggestion of all limitations in a claim).                                                                            

                 Significantly, we note that appellant has failed to point out in the briefs a single                                                          
                 limitation allegedly not taught by the examiner’s proffered combination of Pothapragada and                                                   
                 Inohara.  We further note that appellant has failed to argue that one of ordinary skill in the art                                            
                 would not have a  reasonable expectation of success when attempting to combine the                                                            
                 Pothapragada and Inohara references in the manner suggested by the examiner.  Accordingly,                                                    
                 we find that the examiner has clearly established the second and third elements of a prima                                                    
                 facie case of obviousness, as set forth supra.  We note that the examiner relies upon                                                         
                 Pothapragada for its teaching of Network Attached Storage, in combination with Inohara, for                                                   
                 its teaching of file format conversion enhancements to a file system connected to a network                                                   
                 [answer, pages 4 and 5].   We now analyze the examiner’s proffered motivation for                                                             
                 combining the Pothapragada and Inohara references infra.                                                                                      

                 II.      Appellant notes that the examiner indicated in the final office action that the Inohara                                              
                 reference identified certain problems: e.g., [that] “not all applications can access all file                                                 
                 formats” (column 2, line 10), and “since the utilization of the Internet and WWW [is] rapidly                                                 
                 increasing, there is a high need of processing a variety [sic] kind of formats as simply as                                                   


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