Appeal No. 2000-0580
Application No. 09/025,347
examiner may not, because of doubt that the invention is patentable, resort to speculation,
unfounded assumption or hindsight reconstruction to supply deficiencies in the factual basis for
the rejection. See In re Warner, 379 F.2d 1011, 1017, 154 USPQ 173, 177 (CCPA 1967),
cert. denied, 389 U.S. 1057 (1968). Even when obviousness is based on a single prior art
reference, there must be a showing of a suggestion or motivation to modify the teachings of that
reference. See In re Kotzab, 217 F.3d 1365, 1370, 55 USPQ2d 1313, 1316-17 (Fed. Cir.
2000).
We find in the teachings of Corder no suggestion to modify the system disclosed therein
so as to arrive at the claimed invention and the examiner has not offered any explanation as to
why it would have been obvious to one of ordinary skill in the art to do so. In fact, with
particular regard to the recited voice recognition unit, it is our opinion that modification of
Corder's voice input and analysis unit to cause it to condition the phonetic dictionary to respond
to the child's sound pattern would render the system unsatisfactory for achieving Corder's
instructional objective of teaching the student to imitate the standard phonetic sounds stored in
memory and spoken by the voice synthesizer and, as such, would not have been obvious to one
of ordinary skill in the art. From our perspective, the only motivation for modifying the4
Corder system so as to arrive at the invention recited in claim 1 is found in the luxury of hindsight
4Where the proposed modification would render the prior art invention being modified unsatisfactory for its
intended purpose, the proposed modification would not have been obvious. See Tec Air Inc. v. Denso Mfg. Michigan
Inc., 192 F.3d 1353, 1360, 52 USPQ2d 1294, 1298 (Fed. Cir. 1999); In re Gordon, 733 F.2d 900, 902, 221 USPQ
1125, 1127 (Fed. Cir. 1984).
7
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