Appeal No. 2000-1209
Application No. 08/711,180
1038, 1039, 228 USPQ 685, 686 (Fed. Cir. 1986); In re Piasecki, 745
F.2d 1468, 1472, 223 USPQ 785, 788 (Fed. Cir. 1984); and In re
Rinehart, 531 F.2d 1048, 1052, 189 USPQ 143, 147 (CCPA 1976).
At the outset, we note that appellant elects to have claims
1-18 stand or fall together (brief, at page 5). We take claim 1 as
representative of the group. In the response to the rejection of
claim 1 (answer at page 2-4), appellant argues (brief at page 6)
that “[t]he examiner cites neither a reference nor any technical
inducement to combine the audio-to-video synchronization operation
of Yee into the booting of a client workstation from a remote data
processing system over a network as taught in Basu.”
The examiner responds (answer at page 9) that
“any judgment on obviousness is in a sense necessarily a
reconstruction based upon hindsight reasoning.”
In providing a motivation or a suggestion to combine, we
recognize that the Federal Circuit states, in In re Lee, 277 F.3d
1338, 1342-43, 61 USPQ2d 1430, 1433 (Fed. Cir. 2002),
[t]he essential factual evidence on the issue of
obviousness is set fourth in Graham v. John Deere Co.,
383 U.S. 1, 17-18, 148 USPQ 459, 467 (1966) and extensive
ensuing precedent. The patent examination process
centers on prior art and the analysis thereof. When
patentability turns on the question of obviousness, the
search for and analysis of the prior art includes
evidence relevant to the finding of whether there is a
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