Appeal No. 96-2040
Application No. 08/221,370
where one of the storage and exchange units is not overloaded
and could easily handle its unequal workload, thus wasting
valuable processing time as compared with the instant claimed
system and method.
The examiner’s response [answer-page 4] is to contend
that “this difference is simply a difference in the criterion
used to define what workload is excessive.” We agree that
there is a difference based on a criterion used to define what
workload is excessive (Mizutori considers any imbalance to be
excessive while the instant claimed invention considers there
to be an excessive workload only when the workload value
exceeds a predetermined value) but that criterion may clearly
constitute a nonobvious, or patentable, difference. Thus,
even assuming the examiner is correct in the assessment that
there is a difference between the instant claimed invention
and that disclosed by Mizutori, i.e., “simply a difference in
the criterion,” an analysis under 35 U.S.C. 103 requires not
only that the examiner identify such a difference but also
that the examiner then explain why, after assessing the level
of those skilled in the art, the skilled artisan would have
found the claimed subject matter, as a whole, to have been
5
Page: Previous 1 2 3 4 5 6 7 8 9 Next
Last modified: November 3, 2007