Appeal 2007-1944
Application 10/631,894
today. Moreover, environmental demands on such devices, particularly
cold-weather demands, are well known outside of the colder climates thanks
to the growing popularity, e.g., of winter and alpine sports.
The Examiner, when challenged as to the basis of the "design choice"
argument with regard to the placement of the fuel cell system in the camera
and with regard to the secondary cell "adjacent" to the fuel cell, responded
by identifying engineering responses to the requirements for compact fuel-
cell powered portable electrical devices. (Answer at 12–14.) Thus, both
Ohtani and Peterson provide motivation to put the fuel cell system where it
was known to place electrical power packs—indeed, in a small device such
as a handheld camera, there are not too many places to put a power pack,
and most of them would be reasonably described as being "at a side of a lens
of the camera." Moreover, Prasad indicates that the positioning of the fuel
cell system in a portable device is a matter well left to the decision of the
ordinary designer. (FF 17; Prasad at 2, ¶ 20.) Similarly, Prasad and Shioya
provide evidence that there were incentives to place a secondary cell close to
the terminals of the fuel cell to minimize the size of the power pack and of
the device as a whole. Denying that the present record supports the
conclusion that a person of ordinary skill in the art lacked the ordinary
creativity to place a secondary cell adjacent to the fuel cell terminals in a
device intended to be compact and portable would reduce such a person to
an automaton.
For all of these reasons, we conclude that the Examiner established a
prima facie case of obviousness for the claimed subject matter, and that the
burden was properly shifted to Ushiro to come forward with evidence of
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