Appeal 2007-0374
Application 09/891,167
of monitoring for responses to paged messages. (Col 16, line 53 – Col 17,
line 14)." (Id.) The Examiner then makes the following allegations.
It would have been obvious to one of ordinary skill in the art at
the time the invention was made to combine the teachings of
Singh and Lemelson because the teachings of Lemelson to
monitor the response to messages [sic] would improve the
system of Singh by improving the probability of forwarding
messages to the correct location of the user as determining the
location of the response to messages would provide the current
location of the user. Furthermore, in determining the location
of where a response was sent, this would would [sic] indicate a
location that the client has been for an extended period of
length instead of at the time of accessing a message.
Transmitting to this location would further increase the
likelihood that messages will be forwarded to where the client
currently is located.
(Answer 10-11.) The Appellants "respectfully submit that there is no
suggestion or motivation to combine Singh and Lemelson beyond the
impermissible use of hindsight." (Reply Br. 3.) Therefore, the issue is
whether the Examiner has presented evidence to support his allegation that a
person of ordinary skill in the relevant field would have been prompted to
combine teachings of Singh and Lemelson in the way the claimed invention
does.
III. LAW
"[I]t can be important to identify a reason that would have prompted a
person of ordinary skill in the relevant field to combine the elements in the
way the claimed new invention does." KSR Int'l v. Teleflex Inc., 127 S.Ct.
1727, 1741, 82 USPQ2d 1385, 1396 (2007). A reason to combine teachings
from the prior art "may be found in explicit or implicit teachings within the
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