Appeal No. 1998-0220
Application No. 08/297,437
appellants’ claim 1 requires only three filters: two first dimension filters and a single second
dimension filter. Any delays in processing of the “real-time” data in the suggested system
appear to be de minimis, upon consideration of the broad scope of the claim.
Appellants’ arguments regarding Thompson’s lack of “non-predetermined selection
of a first dimension filter” (Brief, pages 22-23) fail to show nonobviousness of the claimed
subject matter. Appellants do not explain what magic is thought to reside in the language;
based on appellants’ commentary it appears that “non-predetermined” was added to the
claims solely because Thompson uses the word “predetermined.” In any event, the
examiner makes clear on page 17 of the Answer that it is appellants’ prior art Figure 2, not
Thompson, that is relied upon as demonstrating “non-predetermined selection.”
For answer to appellants’ arguments in support of dependent claims 2 and 10,
appearing on page 25 of the Brief, we refer to the reasoning of the examiner as set forth
on page 18 of the Answer. Appellants’ arguments in defense of claim 2 consist of listing
the deficiencies of each piece of evidence in turn, which is not properly responsive to the
rejection based on the combination of the two. Nonobviousness cannot be established by
attacking prior art evidence individually where the rejection is based upon the combined
teachings of the prior art. See In re Merck & Co., 800 F.2d 1091, 1097, 231 USPQ 375,
380 (Fed. Cir. 1986)(citing In re Keller, 642 F.2d 413, 425, 208 USPQ 871, 881 (CCPA
1981)(“Non-obviousness cannot be established by attacking references individually where
the rejection is based upon the teachings of a combination of references.”)). The
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