Ex Parte Hackleman et al - Page 13


              Appeal 2007-0459                                                                       
              Application 10/285,927                                                                 
                    the input documents received by an information retrieval system                  
                    in order to determine the subject categories of each received                    
                    document for storage in a system database such as the image/text                 
                    database 118.                                                                    
              (Barr, col. 31, l. 61 through col. 32, l. 8, see also Fig. 10).                        

                    We do not agree with Appellants’ assertion that the Examiner has                 
              impermissibly used hindsight in formulating the rejection. In contrast, we             
              find the Examiner has taken the proffered motivation directly from the Barr            
              reference at col. 3, ll. 20-24:                                                        
                    It is a still further object of the present invention to provide an              
                    automated system for processing incoming documents to be                         
                    stored on a library or database, which system categorizes each                   
                    incoming document into one or more subjects, and which does                      
                    not require an individual to read each incoming document and                     
                    make a separate judgment categorizing the subject of such                        
                    document.                                                                        

                    Thus, we find that an artisan having knowledge of Liddy would have               
              been reasonably motivated to look to Barr’s automatically categorized                  
              document database as an enhancement to the generic document database                   
              (and associated index) used by Liddy for matching queries (e.g., see Liddy,            
              col. 32, ll. 40-66).  In particular, we find that such a combined system would         
              avoid searching for documents in the database that are unlikely to be of               
              interest to the user (Barr, col. 31, ll. 49-50).  Therefore, for at least the          
              aforementioned reasons, we conclude the Examiner has met the burden of                 
              establishing a prima facie case of obviousness.  Accordingly, we will sustain          
              the Examiner’s rejection of claim 33 as being unpatentable over Liddy in               
              view of Barr.                                                                          

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