Appeal No. 97-0171
Application No. 08/187,290
factual findings necessary to reach this conclusion. Our reading of the Examiner’s reasons
for the determination of obviousness causes us to conclude that the Examiner
believes the claimed invention to be obvious merely because it seems that it would have
been obvious.
We do not find any teaching by Mihm of editing the original information, but even if
we were to find that Mihm does teach some sort of editing of original information,
appellants argue that the Examiner used “impermissible hindsight gained from a reading
of applicants' specification and claims” to combine the teachings of Duthion, Bockholt and
Mihm. We agree with appellants. The Examiner has not provided any convincing line of
reasoning why it would have been obvious for one of ordinary skill in the art at the time of
the invention to combine the teachings of Mihm with those of Duthion and Bockholt. Mihm
merely appends a postal bar code to the document and does not allow for further change
to the document. Mihm does not teach an editing function nor how to edit the information in
the document to generate a new document. The Examiner has not set forth a convincing
line of reasoning why it would have been obvious for one of ordinary skill in the art at the
time of the invention to combine a bar code printing system for faster processing of mail
into a device for learning as disclosed by Duthion or to use the high density bar code as
taught by Bockholt. The Examiner has not provided such a statement of motivation for the
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