Appeal No. 2001,0712
Application 08/148,887
operations for register and memory locations.
As Hitchcock is not directed to developing a
resource allocation device for a compiler, but for an
automated hardware design tool, and since neither reference
teaches or suggests the desirability of using the teachings of
the other to produce Appellants' invention, we find the
Examiner's reasons to combine the teachings of these
references to be inadequate.
As we noted above, the Federal Circuit states that
"[t]he 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 at
1266 n.14, 23 USPQ2d at 1783-84 n.14, citing In re Gordon, 733
F.2d at 902, 221 USPQ at 1127. "Obviousness may not be
established using hindsight or in view of the teachings or
suggestions of the inventor." Para-Ordnance, 73 F.3d at 1087,
37 USPQ2d at 1239, citing W. L. Gore & Assocs., 721 F.2d at
1551, 1553, 220 USPQ at 311, 312-13. In addition, our
reviewing court requires the PTO to make specific findings on
21
Page: Previous 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 Next
Last modified: November 3, 2007