Appeal No. 1998-3416
Application 08/096,538
examiner indicates that Litt does not teach the circuitry for producing a global production
strategy list, a feature set forth in the second clause of the body of representative claim 1
on appeal. Similarly, the examiner indicates at the bottom of page 5 of the answer that Litt
does not explicitly teach a goal list including goals indicating either a planner goal or a
scheduler goal, a feature also recited in the first clause of claim 1 on appeal. Finally, the
examiner indicates at the top of page 6 of the answer that Litt does not teach a means for
resolving a choice from a goals list. This feature is recited at the end of representative
claim 1 on appeal.
On the basis of this recognition alone of the examiner in the statement of the
rejection of the claims on appeal, we conclude the examiner has not set forth a prima facie
case of obviousness. The examiner's attempts with respect to each of the four noted
features of claim 1 on appeal as discussed in the previous paragraph of this
opinion attempts to argue that the artisan would have found obvious the subject matter
anyway based upon the examiner's view of what the reference does teach and what he
believes are inherent features of the reference. A reference cannot be said to have an
inherent feature if it does not specifically teach or address it in some manner. The
examiner's opinion appears to be based upon conjecture and prohibited hindsight.
According to the examiner's reasoning presented here, we find it would be very difficult to
agree with the examiner's position from the standpoint of having to resolve differences of
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