Appeal 2007-0399
Application 09/961,024
employ.” KSR Int’l v. Teleflex Inc., 127 S. Ct. 1727, 1741, 82 USPQ2d
1385, 1396 (2007) (quoting In re Kahn, 441 F.3d 977, 988, 78 USPQ2d
1329, 1336 (Fed. Cir. 2006)).
ANALYSIS
Appellants contended that Examiner erred in rejecting claims 1 to 14,
16 to 18, 28 to 31, 33 to 44, and 49 under 35 U.S.C. § 103(a). Reviewing
the findings of facts cited above, we observe the claimed subject matter to be
found in the Baker reference, especially in view of Earnest and, with respect
to claim 35, the Holm reference.
Appellants have argued that the proper steps to establish a motivation
to combine the references has not been presented by the Examiner. (Brief,
page 12). We perceive that the analysis used by the Examiner is consistent
with the lessons of our guiding court in Kahn and Dystar, which was
endorsed by the Supreme Court in the recent KSR opinion (cases cited
above). The Baker reference teaches the main claimed invention of the
Appellants, but Earnest and Holm, in addressing a problem similar to that of
Baker and that of the Appellants (transferring data from FIFO registers in a
computer interface) demonstrated the prior art to teach other aspects of the
claimed invention. Examiner has particularly pointed out which limitations
were shown and not shown in Baker (Answer, 3 and 4). Examiner has then
shown where those teachings are to be found elsewhere in the prior art, in
the same field of endeavor and, in this case, addressing the same problem.
KSR teaches that the secondary reference need not be solely addressing the
Appellants’ problem. “The second error of the Court of Appeals lay in its
assumption that a person of ordinary skill attempting to solve a problem will
be led only to those elements of prior art designed to solve the same
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