Appeal 2007-0834
Application 09/757,913
i.e., “It is inherent that a snapshot can only be taken when all the data has
been received as claimed. Otherwise, the snapshot would be useless”).
After carefully considering both the Chen and Maggenti references,
we find no specific teaching or suggestion within either reference that fairly
meets the language of the claim that requires “stopping the context
information updating…,” and “taking a snapshot of the compression and
decompression context information …” (claim 1). We find that to affirm the
Examiner on this record would require speculation on our part.
Furthermore, the Court of Appeals for the Federal Circuit has determined
that inherency may not be established by probabilities or possibilities. “The
mere fact that a certain thing may result from a given set of circumstances is
not sufficient.” In re Robertson, 169 F.3d 743, 745, 49 USPQ2d 1949, 1950-
51 (Fed. Cir. 1999) (internal citations omitted). Because we find the
combination of Chen and Maggenti fails to teach or suggest all the
limitations recited in the claim, we agree with Appellants that the Examiner
has failed to meet the burden of presenting a prima facie case of
obviousness. Accordingly, we will reverse the Examiner’s rejection of
independent claim 1 as being unpatentable over Chen in view of Maggenti.
Because independent claim 12 recites equivalent limitations, we will
also reverse the Examiner’s rejection of claim 12 as being unpatentable over
Chen in view of Maggenti for the same reasons discussed supra with respect
to claim 1. Because we have reversed the Examiner’s rejection of each
independent claim, we will not sustain the Examiner’s rejection of any
dependent claims under appeal. Therefore, we also reverse the Examiner’s
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