Appeal No. 2006-1785 Page 24
Application No. 10/768,827
we will sustain the examiner’s rejection of these claims as being
unpatentable over Ryzl in view of McLain.
V. We consider next the examiner’s rejection of claims 9, 10, 12, 20, 21,
22, 30, 31 and 33 as being unpatentable over the teachings of Ryzl in view
of McLain, and further in view of Flynn [answer, page 13].
Motivation to modify Ryzl and McLain with Flynn
Appellant argues that the examiner has failed to set forth a proper
motivation for combining Ryzl with McLain and Flynn [brief, pages 42-45].
In response, the examiner disagrees [answer, page 29]. The Examiner
asserts that the cited section of Flynn clearly details the benefits of using a
Document Type Definition (DTD) when using XML (Extended Markup
Language) [answer, pages 29 and 30]. The examiner points to MPEP §2144
that states: “the expectation of some advantage is the strongest rationale
for combining references” [answer, page 30]. The examiner asserts that the
benefits of using a DTD clearly provide the expectation of some advantage
[id.]. The examiner concludes that the proffered motivation meets the
definition of that which has been determined to be the “strongest rationale
for combining references” [id.].
We note that the examiner states in the rejection that one of ordinary
skill in the art at the time of invention would have been motivated to modify
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