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Ex parte FLAVIO M. MANDULEY et al. - Page 5
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Board of Patent Appeals and Interferences > 1997 > Ex parte FLAVIO M. MANDULEY et al. - Page 5
Appeal No. 95-3433
Application No. 07/812,982
different rate information as required . . . including rate
discounts, rate of particular carriers, and weight, size,
destination, and type of goods schedules.” With this in mind,
the examiner states (Answer, page 4) that “[i]t would have been
obvious to one of ordinary skill in the art at the time that the
invention was made to implement the teachings of Sharpe within
the system taught by Haines with the motivation of providing a
faster and more accurate means of rating shipped or posted goods
that is simpler to access or update when authorized as required.”
Appellants argue (Brief, pages 2 and 3) that:
[T]he Examiner must provide explanation based on logic
and sound scientific reasoning that will support a
holding of obviousness. And, further, the fact that
the invention’s mechanism can be reconstructed and
explained by means of logic and sound scientific
reasoning does not, however, support an obviousness
determination unless that logic and reasoning would
supply sufficient impetus to have led one of ordinary
skill in the art to combine references to make the
claimed invention; and, thus the Examiner can not
establish obviousness by locating references which
describe various aspects of the applicants’ invention
unless the Examiner also provides evidence of the
motivation which would compel a person skilled in the
art to do what the applicants have done.
We agree. The examiner’s reasoning for combining the teachings
of the applied references never states what teachings of Sharpe
should be implemented within the system taught by Haines to
arrive at the claimed invention. We can only guess that the
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Last modified: November 3, 2007
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