Appeal No. 1997-2058
Application No. 08/122,828
partitions. (See brief at page 19.) We agree with appellants that the examiner’s statement
of obviousness is merely a conclusion without support from a teaching in the prior art
references applied or by an express line of reasoning set forth by the examiner.
Obviousness is tested by "what the combined teachings of the references would
have suggested to those of ordinary skill in the art." In re Keller, 642 F.2d 413, 425, 208
USPQ 871, 881 (CCPA 1981). But it "cannot be established by combining the teachings
of the prior art to produce the claimed invention, absent some teaching or suggestion
supporting the combination." ACS Hosp. Sys., Inc. v. Montefiore Hosp., 732 F.2d
1572, 1577, 221 USPQ 929, 933 (Fed. Cir. 1984). And "teachings of references can be
combined only if there is some suggestion or incentive to do so." Id. Here, the prior art
contains none. In fact, the advantages of utilizing concurrent operation with multitasking
and forcing execution of all data access tasks in each partition with the partitions being
accessed sequentially until the tasks are completed are not appreciated by the prior art
applied by the examiner. In our view, the examiner’s analysis of the claimed invention, and
the application of the prior art applied against the claimed invention lacks an analytical
linkage to modify scheduling policy of Howath, as advanced by the examiner, and be
implemented in combination with the system of Miro.
Instead, the examiner relied on hindsight in reaching his obviousness
determination. However, our reviewing court has said, "[t]o imbue one of ordinary skill in
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