Ex Parte Flick

Board of Patent Appeals and Interferences

Aug 7, 2008

10043077 (B.P.A.I. Aug. 7, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte KENNETH E. FLICK
____________

Appeal 2007-3651
Application 10/043,077
Technology Center 2600
____________

Decided: August 7, 2008
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Before: JOSPEH F. RUGGIERO, ROBERT E. NAPPI, and
KEVIN F. TURNER, Administrative Patent Judges.

TURNER, Administrative Patent Judge.

DECISION ON REQUEST FOR REHEARING

INTRODUCTION
Appellant’s Request for Rehearing (filed April 21, 2008) contends
that we erred in our Decision on Appeal, entered March 7, 2008, affirming
the rejection of all pending claims by the Examiner. We have reconsidered
our decision of March 7, 2008 in light of Appellant’s comments in the
Request for Rehearing, and we find no error therein. We, therefore, decline
to make any changes in our prior decision for the reasons which follow.

Appeal 2007-3651
Application 10/043,077

OPINION
Appellant argues that if one reference expressly addresses one
problem, while a second reference addresses an entirely different problem,
then “the person of ordinary skill in the art would be taught away [from]
such a selective combination of the prior art.” (Req. for Reh’g. 4). While
we may appreciate the novelty of Appellant’s argument, we can find no case
law or statute that supports Appellant’s position. “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 (Fed.Cir.1994). The alternate
problems addressed in Ogino and Flick ‘571 cannot be said to discourage
one of ordinary skill in the art from combining the references. While the
objectives of the references may not, by themselves, suggest the
combination, they in no way “teach away” from each other in the context of
the obviousness rejection of claims 18-20 and 23.
Appellant also cites In re Icon Health and Fitness, Inc., 496 F.3d 1374
(Fed. Cir. 2007), for the proposition that disparate approaches to different
problems disclosed by cited references are not pertinent and are therefore
non-obvious to be combined. (Req. for Reh’g. 4). We do not, however, find
any support for such a position in the cited case. The section of the case
cited by Appellant (Req. for Reh’g. 5) details that art that might normally be
considered outside an inventor’s field may be considered analogous art if
“reasonably pertinent to the problem addressed.” Id at 1379. However, this
is quite different than Appellant’s apparent emphasis that the problems
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Application 10/043,077

addressed by the references determine their pertinence and combinability.
Rather, the court finds that in determining the obviousness of a folding
mechanism for a treadmill, analogous art “may come from any area
describing hinges, springs, latches, counterweights, or other similar
mechanisms.” Id at 1380.
With respect to the combination of Ogino and Flick ‘571 in the
rejection of claims 18-20 and 23, Ogino discloses vehicle security systems
and Flick ‘571 discloses home security systems, where both references come
from the analogous art of security systems. Appellant has not argued that
Ogino and Flick ‘571 come from nonanalogous arts, so the consideration
made by the court of whether a secondary reference provides analogous art
is not applicable. As such, we cannot agree with Appellant that one of
ordinary skill in the art would not “logically” look to art within the same
field of endeavor to determine obvious variations of an invention.
In a similar fashion, Appellant argues that the combination of Anzai
and Flick ‘460, applied to the rejection of claims 30-39, 42, 43, 45, and 57-
66, is improper because “the person of ordinary skill in the art, when
modifying the biometric security system of Anzai et al., would not logically
commend his attention to the data communications bus of Flick ‘460.”
(Req. for Reh’g. 7). Given, however, that Anzai is directed to an
authorization system for a motor vehicle, and Flick ‘460 is directed to
vehicle security system, we find no bar to one of ordinary skill in the art
from consideration of the references together.
Lastly, Appellant argues that “the Board’s stated motivation amounts
to a conclusory statement of obviousness.” (Req. for Reh’g. 7). We note
that since our opinion proffered no new grounds of rejection, we provided no
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Application 10/043,077

motivation ourselves, but did affirm the Examiner’s rejections, including the
rationales supplied by the Examiner for combining references. (Opinion p.
8). We do not find the Examiner’s rationale for combining Anzai and Flick
(Ans. 7) to be conclusory and we continue to find it to be proper and
sufficient. As such, we fail to find Appellant’s arguments to be compelling.

CONCLUSION
In summary, we have granted Appellant’s Request for Rehearing to
the extent that we have reconsidered our decision affirming the rejection of
claims 18-23, 30-45, and 57-67, but we deny the Request with respect to
making any changes therein.

DENIED

gvw

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