Appeal No. 96-1349
Application 08/002,168
and would have been obvious to the artisan because it would
improve performance. The examiner has essentially dismissed all
noted differences between the claims and the prior art as being
irrelevant, nondistinguishing limitations. Merely asserting that
the claims and the prior art both normalize a data structure does
not address the specific differences between the claims and the
applied prior art. It is the specific sequence of steps recited
in the claims which must be analyzed and not whether the result
achieved by the claimed invention has been achieved by the prior
art as well. In other words, the rejection must focus on the
actual steps recited in the claims and not on whether the
function being implemented by the method was well known in the
art. The examiner’s approach does not establish a prima facie
case of obviousness.
The only suggestion for performing the steps of
appellant’s claims using the specific claimed template structure
comes from appellant’s own disclosure. Obviousness may not be
established using hindsight or in view of the teachings or
suggestions of the inventor. Para-Ordnance Manufacturing v. SGS
Importers International Inc., 73 F.3d 1085, 1087, 37 USPQ2d 1237,
1239 (Fed. Cir. 1995), cert. denied, 117 S. Ct. 80 (1996). Since
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