Ex parte TOWFIQ - Page 18




          Appeal No. 1999-2720                                                        
          Application No. 08/580,965                                                  
          (Fed. Cir. 1999).                                                           
               We agree with Appellant's assertion17 that no one of                   
          ordinary skill in the art would not have been motivated to                  
          combine Tichy and Ambriola at the time the invention was                    





          made, as the references are contradictory and teach away from               
          each other.                                                                 
               One important indicium of non-obviousness is "teaching                 
          away"                                                                       
          from the claimed invention by the prior art.  In re Dow                     
          Chemical Co., 837 F.2d 469, 473, 5 USPQ2d 1529, 1532 (Fed.                  
          Cir. 1988),                                                                 
          In re Bell, 991 F.2d 781, 784, 26 USPQ2d 1529, 1531 (Fed. Cir.              
          1993).  The present references are replete with evidence                    
          teaching away from the combination for the claimed invention.               
               First, Tichy states18 "The naive solution would be to                  
          store complete copies for the tips of all branches.  Clearly,               


               17Brief, pages 4-6, and Reply Brief, pages 2-3                         
               18Page PSD:13-5, Section 3.2, paragraph 4                              
                                          18                                          





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