Appeal No. 1997-1571
Application No. 08/048,123
OPINION
We have carefully considered the entire record before us,
and we will reverse the rejection of claims 9 and 11 through
16.
The Section 103 rejection of claims 9, 11 through 14 and 16
To establish a prima facie case of obviousness based on a
combination of the content of various references, there must
be some teaching, suggestion or motivation in the prior art to
make the specific combination that was made by the applicant.
In re Raynes, 7 F.3d 1037, 1039, 28 USPQ2d 1630, 1631 (Fed.
Cir. 1993); In re Oetiker, 977 F.2d 1443, 1447, 24 USPQ2d
1443, 1446 (Fed. Cir. 1992). Obviousness cannot be
established by hindsight combination to produce the claimed
invention. In re Gorman,
933 F.2d 982, 986, 18 USPQ2d 1885, 1888 (Fed. Cir. 1991). In
the instant case, the examiner has failed to establish a prima
facie case of obviousness.
Both appellant and examiner have agreed that the primary
reference, Wada does not disclose an attribute data base
storage unit storing "attributes of various editing objects
necessary for simulating characteristics of the semiconductor
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