Appeal No. 2006-1605
Application No. 09/470,741
Ng, none of this prior art, whether taken singly or in
combination, can be said to suggest to those skilled in
the art either the desirability of the selective
combination of teachings of Vetro et al. and Ng
proffered by the Examiner, or a reasonable likelihood
of this selective combination.
Appellants further expand on this same argument in the Reply
Brief. In particular, at pages 3 and 4 of the Reply Brief,
Appellants state the following:
Nothing in Vetro et al., Ng and Bose et al. discloses
or suggests the desirability of reconciling these
mutually different teachings in a manner that would
suggest the claimed invention. Despite these
deficiencies in the prior art proffered by the
Examiner, the Examiner apparently takes the position
that “as long as either Vetro or Ng teaches using MPEQ
[sic, presumably ‘MPEG’], the rejection based on
inherency is correct.” Answer at 18. However, under
applicable law, as the Honorable Board is well aware,
unless the prior art as a whole, including any
contraindications contained therein (such as, e.g.
mutually contradictory teachings), suggests the
desirability of the selective combination proffered by
the Examiner, the prior art cannot render obvious the
claims on appeal. Thus, the Examiner’s position is
contrary to law, and cannot serve as a proper basis for
rejecting the subject application.
In order for us to decide the question of obviousness,
“[t]he first inquiry must be into exactly what the claims
define.” In re Wilder, 429 F.2d 447, 450, 166 USPQ 545, 548 (CCPA
1970). “Analysis begins with a key legal question-- what is the
invention claimed ?...Claim interpretation...will normally
control the remainder of the decisional process.” Panduit Corp.
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