Appeal No. 2002-2066
Application No. 09/288,504
the Ulvila and Dormond references for the Examiner’s proposed
combination. In addition, Appellant contends (Brief, pages 8-12;
Reply Brief, pages 2 and 3) that even assuming, arguendo, that
Ulvila and Dormond could be combined, the resulting combination
would not provide all of the elements of appealed independent
claims 1, 9, and 18.
Upon careful review of the applied prior art in light of the
arguments of record, we are in general agreement with Appellant’s
stated position in the Briefs. The mere fact that the prior art
may be modified in the manner suggested by the Examiner does not
make the modification obvious unless the prior art suggested the
desirability of the modification. In re Fritch, 972 F. 2d 1260,
1266, 23 USPQ2d 1780, 1783-84 (Fed. Cir. 1992).
Initially, we find puzzling the Examiner’s proposed
rationale for combining Ulvila with Dormond, i.e., to provide a
decision tree in the medical field, since Dormond’s medical
treatment support system already has a decision tree (Figure 20)
in place. Further, while the Examiner correctly points out
(Answer, page 11) that Ulvila, at page 9, lines 19-21 and 33-41,
suggests the application of the disclosed decision tree analysis
techniques to fields other than that explicitly described, it is
noteworthy that none of the mentioned application fields involve
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