Appeal 2006-3350
Application 10/287,411
the range of viewing the TV. Thus while Sai teaches storing in
memory of a portable device data indicative of the recording request,
we see no motivation to combine that teaching with that of Huang.
PRINCIPLES OF LAW
On appeal, Appellants bear the burden of showing that the Examiner
has not established a legally sufficient basis for combining the teachings of
Huang with those of Sai. Appellants may sustain this burden by showing
that, where the Examiner relies on a combination of disclosures, the
Examiner failed to provide sufficient evidence to show that one having
ordinary skill in the art would have done what Appellants did. United States
v. Adams, 383 U.S. 39 (1966); In re Kahn, 441 F.3d 977, 987-988,
78 USPQ2d 1329, 1336 (Fed. Cir. 2006); DyStar Textilfarben GmbH & Co.
Deutschland KG v. C.H. Patrick, Co., 464 F.3d 1356, 1360-1361, 80
USPQ2d 1641, 1645 (Fed. Cir. 2006). The mere fact that all the claimed
elements or steps appear in the prior art is not per se sufficient to establish
that it would have been obvious to combine those elements. United States v.
Adams, id; Smith Industries Medical Systems, Inc. v. Vital Signs, Inc.,
183 F.3d 1347, 1356, 51 USPQ2d 1415, 1420 (Fed. Cir. 1999).
ANALYSIS
The Examiner correctly shows where all the claimed elements appear
in the Huang and Sai prior art references. However, Appellants correctly
point out the Examiner premised the rejection on incorporation of Sai's
storage of the recording request into Huang’s portable device. Appellants
further correctly point out the Examiner did not state a legally sufficient
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