Appeal No. 2006-1359
Application No. 10/098,417
possible” (column 2, lines 27-30) [brief, page 3, ¶4]. Appellant argues that nothing in these
statements alone suggests that these problems can be overcome by making modifications to a
NAS device of the type taught by Pothapragada [brief, page 3, ¶4]. Appellant further asserts
that the required evidence for a finding of obviousness has not been provided by the
examiner in the final office action [brief, page 4, ¶2]. Appellant again asserts in the reply
brief that the teachings found in Inohara and Pothapragada are insufficient to suggest a
modification of a NAS device as taught by Pothapragada to add the file enhancements taught
by Inohara [reply brief, page 2, ¶3].
In response, the examiner argues that an artisan would have been motivated to
incorporate the file conversion enhancements taught by Inohara into the NAS device
disclosed by Pothapragada because such a modification to Pothapragada would provide
various applications requiring specific file formats the enhanced capability of accessing NAS
files without requiring a user to perform file conversions manually (see Inohara, col. 2, lines
10-30) [answer, page 10]. The examiner further notes that the mechanisms for retrieving
files from an NAS device are identical to that of retrieving files from a conventional storage
device on a network server [id.]. The examiner notes that Pothapragada discloses the NAS
device functions as a server that appears to a client on the network as a large hard disk
[answer, page 10; see also Pothapragada, col. 1, lines 28-30].
We note that the Court of Appeals for the Federal Circuit has determined that the
motivation to combine under §103 must come from a teaching or suggestion within the prior
art, within the nature of the problem to be solved, or within the general knowledge of a
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