Appeal 2007-1469
Application 10/035,579
1734, 82 USPQ2d 1385, 1391 (2007). The question of obviousness is
resolved on the basis of underlying factual determinations including (1) the
scope and content of the prior art, (2) any differences between the claimed
subject matter and the prior art, (3) the level of skill in the art, and (4) where
in evidence, so-called secondary considerations. Graham v. John Deere Co.,
383 U.S. 1, 17-18, 148 USPQ 459, 467 (1966). See also KSR, 127 S. Ct. at
1734, 82 USPQ2d at 1391 (“While the sequence of these questions might be
reordered in any particular case, the [Graham] factors continue to define the
inquiry that controls.”)
“[R]ejections on obviousness grounds cannot be sustained by mere
conclusory statements; instead, there must be some articulated reasoning
with some rational underpinning to support the legal conclusion of
obviousness.” KSR., 127 S. Ct. at 1741, 82 USPQ2d at 1396 (citing In re
Kahn, 441 F.3d 977, 988, 78 USPQ2d 1329, 1339 (Fed. Cir. 2006)).
ANALYSIS
Appellant correctly points out the Examiner did not state a legally
sufficient basis for the rejection as no evidence had been provided to show
that it was known to a person skilled in the art that storing the result with its
tag as a resulting operand results in quickly determining its status. The
Examiner has not provided an appropriate articulated reasoning for
modifying Lynch.
Further, we find no basis in Lynch for the Examiner’s alternative
premise that the tag is stored within the operand. Rather, Lynch only
teaches that the tag is associated with the operand (FF 1).
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