Appeal 2006-2594
Application 10/034,394
there is no suggestion or motivation in either Bickmore or Patil to cause one
of ordinary skill in the art to undertake such a highly speculative and
selective process." (Br. 10.) Therefore, the issue is whether a motivation to
combine Bickmore and Patil exists.
"The presence or absence of a motivation to combine references in an
obviousness determination is a pure question of fact." In re Gartside, 203
F.3d 1305, 1316, 53 USPQ2d 1769, 1776 (Fed. Cir. 2000) (citing In re
Dembiczak, 175 F.3d 994, 1000, 50 USPQ2d 1614, 1617 (Fed. Cir. 1999)).
A suggestion to combine teachings from the prior art "may be found in
explicit or implicit teachings within the references themselves, from the
ordinary knowledge of those skilled in the art, or from the nature of the
problem to be solved." WMS Gaming Inc. v. Int'l Game Tech., 184 F.3d
1339, 1355, 51 USPQ2d 1385, 1397 (Fed. Cir. 1999) (citing In re Rouffet,
149 F.3d 1350, 1355, 47 USPQ2d 1453, 1456 (Fed. Cir. 1998)).
Here, like the Appellant's invention, Bickmore's "Digestor system
automatically converts web-based documents designed for desktop viewing
into formats appropriate for handheld devices with small display screens,
such as Palm-PCs, PDAs and cellular phones." (Abstract, ll. 1-3.) "The
approach taken in Digestor is to provide a set of techniques that transform all
images in a page by pre-defined scaling factors (25%, 50% and 75%) and
making the reduced images hypertext links back to the originals." (P. 539.)
For its part, Patil "relates to a system and method for displaying pop-
up symbols to enable users to select accelerator keys associated with
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