Appeal No. 2006-1618
Application No. 10/046,797
particular image well beyond the two possibilities for initial starting vertices
disclosed in Kim. In Kim, only the end points (open loop image) or the farthest
points on the contour (closed loop image) are selected as the starting vertices
[see Kim, col. 3, lines 13-18]. Manually selecting verticies, however, would yield
significantly greater numbers of potential starting vertices and not be limited to
only two sets of vertices.
Ultimately, providing user input to Kim's system amounts to a tradeoff
between the useful and beneficial features afforded by such user input noted
above and efficiency. But such a tradeoff does not preclude the advantages
obtained that would be readily apparent to the skilled artisan by applying the
teachings of Suzuki to Kim's system as noted above.
Furthermore, we are not persuaded by appellant's argument that the
skilled artisan would not reasonably expect success from combining Kim and
Suzuki. It is well settled that the prior art can be modified or combined to reject
claims as prima facie obvious as long as there is a reasonable expectation of
success. In re Merck & Co., Inc., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir.
1986). Although obviousness does not require absolute predictability, at least
some degree of predictability is required. Evidence showing there was no
reasonable expectation of success may support a conclusion of nonobviousness.
In re Rinehart, 531 F.2d 1048, 189 USPQ 143 (CCPA 1976).
We see no reason why the skilled artisan would not reasonably expect
success if Suzuki's teachings were combined with Kim in the manner suggested
9
Page: Previous 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 Next
Last modified: November 3, 2007