Appeal No. 96-3699
Application 08/063,407
After consideration of the positions and arguments presented by both the examiner and the
appellant, we have concluded that the rejection of independent claim 1 should not be sustained.
The examiner has not set forth adequate motivation for combining the teachings of Prager and
Bourne. It is not evident that by combining Bourne’s hierarchical teaching with Prager, one of ordinary
skill in the art at the time the invention was made would have expected that Prager’s method would
actually solve problems more efficiently (faster) and there is no analysis of Prager’s method showing
that this is the case. To the contrary, the data bases 34 and 50 of Prager’s Figure 3 do not exchange or
substitute data. Thus, providing hierarchical levels therein would not speed up data substitution and
problem solving as in appellant’s invention where information is substituted between data bases.
Accordingly, improved efficiency of carrying out Prager’s method does not appear to be motivation for
combining the teachings of Prager and Bourne.
The examiner has provided no other motivation for combining the teachings of this prior art.
The mere fact that the prior art may be modified in the manner suggested by the examiner does not
make the modification obvious unless the prior art suggested the desirability of the modification. In re
Fritch, 972 F.2d 1260, 1266, 23 USPQ2d 1780, 1783-84 (Fed. Cir. 1992).
Even if there were some suggestion or incentive to combine the teachings of the two references,
we would not sustain the rejection. Paragraph (h) of claim 1 requires substituting said object, which is
derived from a first data base, for at least one word in the process data, which is derived from a second
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