Appeal No. 2006-3032 8
Application No. 09/969,040
Group A, claims 19-21
A. We consider first the examiner’s rejection of claims 19-21 as being
unpatentable over the teachings of Smith in view of Oyama. Since
appellants’ arguments with respect to this rejection have treated these
claims as a single group which stand or fall together, we will consider
independent claim 19 as the representative claim for this rejection. See
37 C.F.R. § 41.37(c)(1)(vii)(2004).
Appellants agree with the examiner that Smith does not teach frame-
to-frame comparisons [brief, page 8]. However, Appellants assert that a
prima facie case of obviousness has not been presented because it would not
be obvious to combine the references in the manner proposed by the
examiner [brief, page 10]. In particular, Appellants assert that it would not
be obvious to modify Smith to include Oyama’s frame-to-frame comparisons
[id.]. Appellants assert that frame-to-frame motion becomes an issue with
respect to Smith’s method only if Smith’s method is modified to include
frame-to-frame comparisons [id.]. Appellants argue that there is no
incentive to introduce a problem by modifying Smith with the teachings of
Oyama, unless there is some offsetting advantage to be realized [id.].
Appellants assert that Smith would be rendered less suitable for its intended
purpose if Oyama’s frame-to-frame comparisons were incorporated in Smith
in the manner suggested by the examiner [brief, page 11]. Appellants point
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