Ex parte SPECTOR - Page 7

               Appeal No. 2000-0580                                                                                               
               Application No. 09/025,347                                                                                         

               examiner may not, because of doubt that the invention is patentable, resort to speculation,                        
               unfounded assumption or hindsight reconstruction to supply deficiencies in the factual basis for                   
               the rejection.  See In re Warner, 379 F.2d 1011, 1017, 154 USPQ 173, 177 (CCPA 1967),                              
               cert. denied, 389 U.S. 1057 (1968).  Even when obviousness is based on a single prior art                          
               reference, there must be a showing of a suggestion or motivation to modify the teachings of that                   
               reference.  See In re Kotzab, 217 F.3d 1365, 1370, 55 USPQ2d 1313, 1316-17 (Fed. Cir.                              
                      We find in the teachings of Corder no suggestion to modify the system disclosed therein                     
               so as to arrive at the claimed invention and the examiner has not offered any explanation as to                    
               why it would have been obvious to one of ordinary skill in the art to do so.  In fact, with                        
               particular regard to the recited voice recognition unit, it is our opinion that modification of                    
               Corder's voice input and analysis unit to cause it to condition the phonetic dictionary to respond                 
               to the child's sound pattern would render the system unsatisfactory for achieving Corder's                         
               instructional objective of teaching the student to imitate the standard phonetic sounds stored in                  
               memory and spoken by the voice synthesizer and, as such, would not have been obvious to one                        
               of ordinary skill in the art.   From our perspective, the only motivation for modifying the4                                                                                      

               Corder system so as to arrive at the invention recited in claim 1 is found in the luxury of hindsight              

                      4Where the proposed modification would render the prior art invention being modified unsatisfactory for its 
               intended purpose, the proposed modification would not have been obvious.  See Tec Air Inc. v. Denso Mfg. Michigan  
               Inc., 192 F.3d 1353, 1360, 52 USPQ2d 1294, 1298 (Fed. Cir. 1999); In re Gordon, 733 F.2d 900, 902, 221 USPQ        
               1125, 1127 (Fed. Cir. 1984).                                                                                       

Page:  Previous  1  2  3  4  5  6  7  8  9  10  Next 

Last modified: November 3, 2007