Appeal No. 95-3641
Application 07/992,069
claimed invention is not suggested by WP 5.1. We can find
nothing in the conventional features of WP 5.1 which would have
suggested the invention as claimed by appellant. The examiner’s
reliance on the obviousness of a translation bridge between data
formats does not seem pertinent to the storage of files in WP
5.1. This concept only arises because the examiner is trying in
hindsight to justify doing what appellant has done. The
“translation bridge” teachings of Wright have not been considered
as noted above. In our view, absent advance knowledge of this
invention gained by reading appellant’s specification, the
artisan would not have found the claimed invention suggested by
the conventional operation of WP 5.1.
We also note that the examiner’s motivation for modifying
WP 5.1 to arrive at the claimed invention amounts to nothing more
than a recognition of the advantages of the invention described
in appellant’s specification. We are not convinced that these
advantages were at all apparent to the artisan based only on the
teachings of WP 5.1.
In summary, we are not persuaded that the teachings of WP
5.1 would have suggested to the artisan the obviousness of the
invention as recited in any of claims 1-8. Therefore, the
decision of the examiner rejecting claims 1-8 is reversed.
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