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 -8-Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 13 NextLast modified: November 3, 2007