Appeal No. 2006-2011
Application No. 09/996,720
examiner’s proposed modification of Bruce would render the Bruce device unfit for its
intended purpose [brief, pages 11-13]. The examiner responds that the artisan would
understand that one can count total writes with slash marks on a sticker as opposed to
use of a register memory. The examiner observes that the invention is not limited to an
electronic display [answer, pages 33-34]. Appellants respond that the examiner has
provided no motivation as to why the artisan would remove the electronic circuitry of
Bruce and replace it with stickers and slash marks. Appellants reiterate that the artisan
would interpret the claimed invention as a display electrically connected to the other
components of the memory card [reply brief, page 3].
We will not sustain the examiner’s rejection of claims 1, 3-6, 8, 9, 12, 13, 16, 17,
and 23 based on Bruce taken alone. Bruce fails to teach any display on a memory
card. The examiner’s proposal to modify Bruce to include slash marks on a sticker is
not only preposterous since the Bruce memory card is designed to have thousands of
writes, but is not suggested anywhere by Bruce. The examiner’s proposed modification
of Bruce comes only from an improper attempt to reconstruct the claimed invention in
hindsight. Since separately argued claims 2 and 26 depend from claims 1 and 23
respectively, we also do not sustain the examiner’s rejection of these dependent claims.
With respect to the rejection of claims 1-6, 8, 9, 12, 13, 16, 17, and 20-22 based on
Shimizu taken alone, the examiner has presented findings in support of obviousness
[answer, pages 14-21]. With respect to claims 1, 3-6, 8, 9, 12, 16, 17, and 22, in
addition to the arguments considered above, appellants argue that Shimizu fails to
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