Ex parte Tylicki
In Ex parte Tylicki, (Appeal 2009-012901, Application 10/890,620) the issue was whether the Examiner erred in finding that the combination of the references to Cole and Steinetz teaches the limitations of claim 1.
Claim 1 recited “A reprogrammable mechandise display for door chimes comprising a microcontroller unit and a button board with a plurality of buttons, wherein each of said buttons is electronically connected to said microcontroller unit and is associated with a unique sound file as corresponds to a different door chime and wherein the microcontroller substitutes for demonstration purposes for each of the different door chimes.”
Appellants argued that the Cole and Steinetz combination does not teach the claimed invention because Cole teaches that each selectable chime platform is itself capable of playing a corresponding chime or chimes, without the use of a substitute, and Steinetz teaches a single chime platform for a given home, rather than a plurality of different selectable chime platforms.
As to the Appellants’ arguments, citing that “[O]ne cannot show non-obviousness by attacking references individually where . . . the rejections are based on combinations of references.” In re Keller, 642 F.2d 413, 426 (CCPA 1981), the Board concluded that “[t]he test for obviousness is not whether Steinetz’s single chime platform for a given home may be bodily incorporated into Cole’s selectable chime platform. Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art, which is that Steinetz’s microprocessor could be incorporated in Cole’s merchandise display to allow playing a plurality of doorbell buttons, each one associated with a pre-selected sound file or chime. See Keller, 642 F.2d at 425.” The Board affirmed the Examiner’s rejection.
So if one has a rejection based on the combined teachings of two or more references, simply asserting that each of the references fails to disclose or suggest the claimed invention will not be effective and the appeal would have been better served as to why the combination was improper or why the combination in any case did not disclose or suggest the claims.