Appeal No. 1999-2720
Application No. 08/580,965
(Fed. Cir. 1999).
We agree with Appellant's assertion17 that no one of
ordinary skill in the art would not have been motivated to
combine Tichy and Ambriola at the time the invention was
made, as the references are contradictory and teach away from
each other.
One important indicium of non-obviousness is "teaching
away"
from the claimed invention by the prior art. In re Dow
Chemical Co., 837 F.2d 469, 473, 5 USPQ2d 1529, 1532 (Fed.
Cir. 1988),
In re Bell, 991 F.2d 781, 784, 26 USPQ2d 1529, 1531 (Fed. Cir.
1993). The present references are replete with evidence
teaching away from the combination for the claimed invention.
First, Tichy states18 "The naive solution would be to
store complete copies for the tips of all branches. Clearly,
17Brief, pages 4-6, and Reply Brief, pages 2-3
18Page PSD:13-5, Section 3.2, paragraph 4
18
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