Appeal No. 2006-1359
Application No. 10/098,417
person of ordinary skill in the field of the invention, to look to particular sources, to select
particular elements, and to combine them as combined by the inventor [emphasis added].
Ruiz v. A.B. Chance Co., 234 F.3d 654, 665, 57 USPQ2d 1161, 1167 (Fed. Cir. 2000).
In the instant case, we note that the reasons for motivation proffered by the examiner
are taken directly from the Inohara reference [answer, page 5]:
It would have been obvious to one of ordinary skill in the art at the time of the
invention to incorporate the file format conversion mechanism taught by
Inohara et al. into the data management mechanism taught by Pothapragada et
al., since (1) it is taught that NAS is an intelligent storage device, including its
own operating system and file system, that is dedicated to file serving and the
file format conversion mechanism taught by Inohara et al. is disclosed as
being an enhancement to a file system, and furthermore (2) because the file
format conversion mechanism taught by Inohara et al. solves the problem that
not all applications can access all file formats (see col. 2, lines 10-14), and
since the utilization of the Internet and WWW are rapidly increasing there is a
high need of processing a variety kind of formats as simply as possible (see
col. 2, lines 27-30).
We further note the portions of Inohara relied upon by the examiner, see col. 2, lines
10-14:
Generally, not all applications can access all file formats. Therefore, even if a
user stores information in a file having a certain file format, the user is often
required to perform a "file conversion" for the file in order to enable another
application to access the file. A file as an input for the format conversion is
called a "conversion originating file", and a file as an output is called a
"conversion destination file".
See also Inohara at col. 2, lines 27-30:
As described above, since the utilization of the Internet and WWW are rapidly
increasing, there is a high need of processing a variety kind of formats as
simply as possible [emphasis added].
We find that the examiner has provided a proper motivation statement taken directly
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