Appeal No. 1999-2714
Application No. 08/504,562
examiner has relied upon improper hindsight in an attempt to reconstruct the claimed
invention. (See brief at page 17.) We agree with appellant. The examiner disagrees
with appellant’s position and maintains that “the combination of references shows
indicating the location of fixed length blocks.” (See answer at page 18.) We disagree
with the examiner and do not find that the examiner has provided a convincing analysis
or line of reasoning to reach this conclusion.
The examiner maintains that appellant is basing the arguments on the bodily
incorporation of the teachings of Queen into Metzner, and that this is improper. (See
answer at page 23.) While the examiner appears to interpret appellant’s arguments in
this manner, appellant appears to be arguing that the methodologies of Metzner and
Queen are very different and that it would not have been obvious to one of ordinary skill
in the art to have been motivated to look to the teachings of Queen starting from the
teachings of Metzner. The examiner maintains that the alleged deficiency of Queen is
not material to the claims (See answer at page 22), but does not explain why. The
examiner then maintains that the combination of Metzner and Queen meets each and
every limitation in the claims. We disagree with the examiner’s conclusion and find that
the examiner appears to miss the distinction between using fixed length segments for
making the mathematical representations and the use of variable length representations
and recognition during a comparison. Therefore, we agree with appellant that the
examiner has not set forth a prima facie case of obviousness with respect to the claims
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