Appeal No. 2000-1250
Application No. 08/662,077 Page 6
Obviousness is tested by "what the combined teachings of the
references would have suggested to those of ordinary skill in the
art." In re Keller, 642 F.2d 413, 425, 208 USPQ 871, 881 (CCPA
1981). But it "cannot be established by combining the teachings
of the prior art to produce the claimed invention, absent some
teaching or suggestion supporting the combination." ACS Hosp.
Sys., Inc. v. Montefiore Hosp., 732 F.2d 1572, 1577, 221 USPQ
929, 933 (Fed. Cir. 1984). And "teachings of references can be
combined only if there is some suggestion or incentive to do so."
Id. Here, we agree with the appellants, for the reasons set
forth on page 9 of the brief, that the prior art contains none.
The examiner’s position (answer, page 4) is that the motivation
to combine the teachings of Ramstrom and Astmann is to provide
Ramstrom’s system with the enhanced capability of processor
overhead.
We find that the examiner’s reasoning is directed to the
result of modifying Ramstrom and Astmann, and not to reasons why
an artisan of ordinary skill would have been motivated to make
the proposed modification. Ramstrom is directed to modular
application software for a telecommunications switching system.
The system is designed with a control architecture which
separates the system into functional blocks (col. 1, lines 15,
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