Appeal No. 2006-1359
Application No. 10/098,417
from a teaching or suggestion found within the prior art that reasonably establishes why one
of ordinary skill in the art would have been motivated to apply the enhanced file format
conversion method of Inohara to the generic Network Attached Storage (NAS) file servers
disclosed by Pothapragada [emphasis added]. We agree with the examiner that such a
combined system would clearly enable client applications to easily access a variety of file
formats stored on a NAS file server where both the client and NAS file server are connected
to the Internet and the WWW.
In summary, we find that the Pothapragada and Inohara patents are analogous references
that teach every limitation recited in the claim when combined in the manner suggested by
the examiner. We further find that the examiner has set forth a proper motivation statement,
as discussed supra, and again note that appellant has failed to argue any limitations allegedly
not taught by the combination of references relied upon by the examiner. In making our
decision, we have relied solely upon the teachings of the Pothapragada and Inohara
references of record, and have not considered any extrinsic evidence cited by the examiner in
the answer [see e.g., cited hypertext links, pages 8 and 9, answer], nor have we considered
any alleged “personal knowledge” of the examiner that is not supported by the references of
record [see reply brief, page 2, ¶3]. Therefore, we find that the examiner has fully met
his/her burden of establishing a proper prima facie case of obviousness. Accordingly, we
will sustain the examiner’s rejection of claim 1 for essentially the same reasons as argued by
the examiner.
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