Appeal 2006-3331
Application 10/829,797
have been obvious to use an access code for accessing a checking account in place
of the fingerprint of McNeal. See KSR, 127 S.Ct. at 1742, 82 USPQ2d at 1397
(“Common sense teaches … that familiar items may have obvious uses beyond
their primary purposes, and in many cases a person of ordinary skill will be able to
fit the teachings of multiple patents together like pieces of a puzzle.”)
The Appellant further argues that independent claim 15 is patentable over
McNeal, Abecassis, Sunderji, and Braun because “[t]here is no suggestion in
Sunderji which focuses on the unique difficulties of check fraud” (Reply Br. 8).
The Appellant's contention does not persuade us of error on the part of the
Examiner because the Appellant responds to the rejection by attacking the
references separately, even though the rejection is based on the combined
teachings of the references. Nonobviousness cannot be established by attacking
the references individually when the rejection is predicated upon a combination of
prior art disclosures. See In re Merck & Co. Inc., 800 F.2d 1091, 1097, 231 USPQ
375, 380 (Fed. Cir. 1986). In particular, the Examiner does not rely on Sunderji
for the solution to the problem of check fraud, because McNeal already teaches
this solution. Rather, the Examiner relies on Sunderji to show that it was known in
the art at the time the invention was made to use a single identifier to access
multiple accounts (Answer 6). It is the combined teachings of McNeal, Abecassis,
Sunderji, and Braun, rather than the individual teachings of each reference, on
which the rejection is based.
The Appellant further argues that independent claim 24 is patentable over
McNeal, Braun, Tedesco, and Abecassis because “there is no suggestion in
22
Page: Previous 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 Next
Last modified: September 9, 2013