Appeal 2006-3117
Application 09/732,498
multiple patents, the effects of demands known to the design community or
present in the marketplace, and the background knowledge possessed by a
person having ordinary skill in the art. KSR, 127 S. Ct. at 1740-41, 82
USPQ2d at 1396.
ANALYSIS
35 U.S.C. § 103(a) REJECTION
As set forth above, independent claim 1 requires an IRD that includes
a flash memory having transaction and navigation activity data residing
thereon, and that the IRD may transmit signals via a modem. The claim
further requires an application server for transmitting an application program
to the IRD, a communication server for receiving the transaction and
navigation data, and an interactive server that encapsulates received data into
an appropriate protocol for transmission. We find that Brown, Travaille,
Leermakers and Gessel are not properly combined to teach those limitations.
Particularly, we find insufficient support in the record before us for the
Examiner’s conclusion of obviousness. The Supreme Court has held that in
analyzing the obviousness of combining elements, a court need not find
specific teachings, but rather may consider "the background knowledge
possessed by a person having ordinary skill in the art" and "the inferences
and creative steps that a person of ordinary skill in the art would employ."
See KSR Int’l v. Teleflex Inc., 127 S. Ct. at 1740-41, 82 USPQ2d at 1396
(2007). To be nonobvious, an improvement must be "more than the
predictable use of prior art elements according to their established
functions." Id. However, the basis for an obviousness rejection cannot be
merely conclusory statements; there must be some "articulated reasoning
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