Ex Parte Mello et al - Page 18

              Appeal 2007-2240                                                                                           
              Application 09/818,016                                                                                     

         1    of the words teaching, suggestion, and motivation, or by overemphasis on the                               
         2    importance of published articles and the explicit content of issued patents.  The                          
         3    diversity of inventive pursuits and of modern technology counsels against limiting                         
         4    the analysis in this way.  In many fields it may be that there is little discussion of                     
         5    obvious techniques or combinations, and it often may be the case that market                               
         6    demand, rather than scientific literature, will drive design trends.”  Id.  “Under the                     
         7    correct analysis, any need or problem known in the field of endeavor at the time of                        
         8    invention and addressed by the patent can provide a reason for combining the                               
         9    elements in the manner claimed.”  Id at 1732, 82 USPQ2d at 1397.                                           
        10        Automation of a Known Process                                                                          
        11        It is generally obvious to automate a known manual procedure or mechanical                             
        12    device.  Our reviewing court stated in Leapfrog Enterprises Inc. v. Fisher-Price                           
        13    Inc., 485 F.3d 1157, 82USPQ2d 1687 (Fed. Cir. 2007) that one of ordinary skill in                          
        14    the art would have found it obvious to combine an old electromechanical device                             
        15    with electronic circuitry “to update it using modern electronic components in order                        
        16    to gain the commonly understood benefits of such adaptation, such as decreased                             
        17    size, increased reliability, simplified operation, and reduced cost. . . . The                             
        18    combination is thus the adaptation of an old idea or invention . . . using newer                           
        19    technology that is commonly available and understood in the art.” Id at 1163, 82                           
        20    USPQ2d 1691.                                                                                               
        21                                                                                                               
        22                                           ANALYSIS                                                            
        23     Claims 1-8 and 10 rejected under 35 U.S.C. § 103(a) as obvious over Lesaint and                           
        24                                            Bergeron.                                                          


                                                           18                                                            


Page:  Previous  9  10  11  12  13  14  15  16  17  18  19  20  21  22  23  Next

Last modified: September 9, 2013