Appeal No. 2002-1028
Application No. 09/208,430
each of the gaming machines in the Tashiro et al
system, would have to be updated with data for the
"reconstruction" of the game space to include the new
player in order for mid-game entry to be successful.
(Emphasis ours)
First, that Tashiro is capable of transferring
reconstruction data fails to address the obviousness of creating
and transferring such information. Merely that the prior art can
be modified in the manner suggested by the examiner does not
render the modification obvious unless the prior art suggests the
desirability of the modification. In re Fritch, 972 F.2d 1260,
1266, 23 USPQ2d 1780, 1783-4 (Fed. Cir. 1992). Second, a factual
inquiry whether to modify a reference must be based on objective
evidence of record, not merely conclusionary statements of the
examiner. See In re Lee, 277 F.3d 1338, 1343, 61 USPQ2d 1430,
1433 (Fed. Cir. 2002). As neither reference even suggests
creating and transferring reconstruction data, the motivation for
modifying Tashiro to include creating and transferring
reconstruction data must be based on speculation and/or
impermissible hindsight. Consequently, we cannot sustain the
rejection of independent claims 1 and 12 and their dependents,
claims 2 through 11 and 13 through 16.
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