Appeal No. 1998-0630
Application 08/231,655
claimed invention. No motivation or rationale has been provided by the examiner as to how or why the
applied references would be combined except to say that "such a system will provide a measure of
correlation with other users and a ranking system, thus providing improved filtering and ease of creating
individual profile" (Final Office action, page 3). We note that only appellants’ specification (see page 4)
discusses the need for correlation with other users as a basis for providing a ranking of information, and
the examiner’s reliance upon such motivation constitutes hindsight.
In addition, we agree with appellants (Brief, pages 6 to 7) that the examiner has failed to point
to some teaching, suggestion or implication in the prior art as a whole or knowledge generally available
to one having ordinary skill in the art which would have led the artisan to combine the applied
references other than to say that they are combinable because all of the references pertain to
information accessing systems having information filtering features (Answer, pages 5 to 6). We agree
with appellants (Brief, page 7) that "it is not at all apparent how the features of the Yourick patent,
which pertain to a video merchandising system, can be considered to be related to the electronic mail
messaging system of the Scannell et al patent or the news filtering system of the Sheth et al publication."
Furthermore, we agree with appellants (Brief, page 7) that "[t]he mere fact that, at a very superficial
level, the references can all be considered to relate to information access" does not constitute a prima
facie case of obviousness.
We agree with appellants (Brief, page 6) that "[t]here is no disclosure in any of the references
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