Appeal 2007-0434
Application 10/041,207
access on a network (see also Squilla; column 9, lines 30-32. . . ." (Id. 15.)
The Appellants make the following arguments.
Squilla does not want his identifiers to uniquely identify the
digital images, because to do so would frustrate a purpose of his
invention. Namely, the categorization of images. Because
Squilla clearly does not intend each image to be its own unique
category, there is no need in Squilla, thus no suggestion or
incentive, to provide an alternative means (such as disclosed in
Hobbes) for assigning a unique identifier to the digital images.
(Reply Br. 3.) Therefore, the issue is whether the Appellants have shown
that adding URLs or Uniform Resource Identifiers ("URIs") to Squilla's
images would have rendered the reference inoperable for its intended
purpose.
A. PRINCIPLES OF LAW
The presence or absence of a reason "to combine references in an
obviousness determination is a pure question of fact." In re Gartside, 203
F.3d 1305, 1316, 53 USPQ2d 1769, 1776 (Fed. Cir. 2000) (citing In re
Dembiczak, 175 F.3d 994, 1000, 50 USPQ2d 1614, 1617 (Fed. Cir. 1999)).
"[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
references themselves, from the ordinary knowledge of those skilled in the
art, or from the nature of the problem to be solved." WMS Gaming Inc. v.
Int'l Game Tech., 184 F.3d 1339, 1357, 51 USPQ2d 1385, 1397 (Fed. Cir.
1999) (citing In re Rouffet, 149 F.3d 1350, 1357, 47 USPQ2d 1453, 1456
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