Appeal 2007-1412
Application 09/822,152
1157, 1164, 77, USPQ2d 1865, 1869 (Fed. Cir. 2006). Where the teachings
of two or more prior art references conflict, the examiner must weigh the
power of each reference to suggest solutions to one of ordinary skill in the
art, considering the degree to which one reference might accurately discredit
another. In re Young, 927 F.2d 588, 591, 18 USPQ2d 1089, 1091 (Fed. Cir.
1991.) If the proposed modification would render the prior art invention
being modified unsatisfactory for its intended purpose, then there is no
suggestion or motivation to make the proposed modification. In re Gordon,
733 F.2d 900, 902, 221 USPQ 1125, 1127 (Fed. Cir. 1984.) Further, our
reviewing court has held that:
A reference may be said to teach away when a person of
ordinary skill, upon reading the reference, would be discouraged from
following the path set out in the reference, or would be led in a
direction divergent from the path that was taken by the applicant. In
re Gurley, 27 F.3d 551, 553, 31 USPQ2d 1130, 1131 (Fed. Cir. 1994);
See also Para-Ordnance Mfg. v. SGS Importers Int’l, 73 F.3d 1085,
1090, 37 USPQ2d 1237, 1241 (Fed. Cir. 1995).
ANALYSIS
A. 35 U.S.C. § 103(a) REJECTION
We begin our analysis by noting that all the independent claims (1, 9
and 16), currently pending before us, require the limitation of highlighting/
visibly marking restricted/objectionable terms found in a document. (Br.
Appendix A.) As detailed in the Findings of Fact section above, we found
that Lapierre discloses a closed caption system for retrieving objectionable
terms in a television program, and blocking them from the displayed caption
to prevent the viewer from seeing them. (Findings 5 and 6.) Further, we
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