Appeal No. 1998-3335
Application 08/014,867
Appellants argue that MATLAB does not disclose the
features of claims 31 and 35 and there is no suggestion or
motivation to modify to achieve a gene information survey
apparatus and method as recited in claims 31-37.
We conclude that the Examiner has failed to establish a
prima facie case of obviousness. The Examiner provides no
factual evidence for the assertion that one skilled in the art
would have known how to program MATLAB to produce the claimed
subject matter. The fact that a computer was capable of being
programmed with MATLAB to perform the claimed algorithm does
not make the subject matter obvious unless one skilled in the
art knew what steps to program. See In re Prater,
415 F.2d 1393, 1406, 162 USPQ 541, 551 (CCPA 1969) ("Assuming
the existence, at the time of the invention, of
general-purpose digital computers as well as typical
programming techniques therefor, it is nevertheless plain that
appellants' invention, as defined in apparatus claim 10, was
not obvious under 35 U.S.C. § 103 because one not having
knowledge of appellants' discovery simply would not know what
to program the computer to do."). See also In re Mills,
916 F.2d 680, 682, 16 USPQ2d 1430, 1432 (Fed. Cir. 1990)
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