Appeal No. 1998-2072
Application No. 08/777,054
the reference: “It is preferred also to write alternate blocks...in reverse order to avoid
having to reverse the order of the bits in the block after read out from the tape.”
McLaughlin thus at least recognizes that data may be read in reverse order to that
written. We do not interpret the disclosure as referring to an alternative embodiment of the
invention. Further, we find the teaching falls short of an objective suggestion to modify
McLaughlin’s disclosed embodiment. When obviousness is based on a particular prior art
reference, there must be a showing of a suggestion or motivation to modify the teachings
of that reference. B.F. Goodrich Co. v. Aircraft Braking Sys. Corp., 72 F.3d 1577, 1582,
37 USPQ2d 1314, 1318 (Fed. Cir. 1996). In the prior art applied, we fail to see any
teaching or suggestion of an incentive to read data in an order reverse to that written.
What is missing in the instant rejection, at the least, is an evidentiary showing of
some salient reason from the prior art to do what appellants have done -- reading data
from a storage medium in an opposite direction from which it was written, as required by
independent claims 18 and 26 -- and thereby add complexity to the system of McLaughlin,
even though the reference teaches that the disclosed, simpler embodiment is preferred.
Moreover, on this record, an opinion on our part with regard to whether the above-noted
disclosure at column 3 of McLaughlin might suggest the ordered procedures of encryption
and decryption required by the instant claims would be mere speculation.
Since we disagree with the examiner’s findings with respect to what the reference
teaches, and the examiner has not provided any other showing of motivation from the prior
-4-
Page: Previous 1 2 3 4 5 6 Next
Last modified: November 3, 2007