Appeal No. 2006-3120
Application No. 09/944,695
nature of the problem to be solved. DyStar Textilfarben GmbH & Co.
Deutschland KG v. C.H. Patrick Co., 464 F.3d 1356, 1366, 80 USPQ2d 1641,
1649 (Fed. Cir. 2006). See also In re Kahn, 441 F.3d 977, 987-88, 78 USPQ2d
1329, 1336 (Fed. Cir. 2006). Notably, when the source of motivation is not from
the prior art references, “the ‘evidence’ of motive will likely consist of an
explanation of the well-known principle or problem-solving strategy to be
applied.” DyStar, 464 F.3d at 1366, 80 USPQ2d at 1649. We find the skilled
artisan would have ample motivation to combine DeBry’s teachings with
Mazzagatte essentially for the reasons stated by the examiner. We further note
that appellant’s arguments regarding the lack of a teaching or suggestion that the
user controls the private key is simply not commensurate with the scope of the
claims.
For at least the above reasons, we will sustain the examiner’s rejection of
independent claims 1, 12, 19, and 29. Since appellant has not separately argued
the patentability of the dependent claims, these claims fall with the independent
claims. See In re Nielson, 816 F.2d 1567, 1572, 2 USPQ2d 1525, 1528 (Fed.
Cir. 1987). See also 37 CFR § 41.37(c)(vii).
In summary, we have sustained the examiner's rejection with respect to all
claims on appeal. Therefore, the decision of the examiner rejecting claims 1-8,
10-25, and 27-35 is affirmed.
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