Ex Parte WONG et al - Page 5




               Appeal No. 2001-0575                                                                                                  
               Application 08/924,867                                                                                                

               show such an image archive server, contending merely that it would be “advantageous for the                           
               pre-computed hashes to be stored in a central archive controlled by a server rather than each                         
               computer [as taught by Dyson] having to store the pre-computed hashes separately because it                           
               would not necessitate that each display computer devote it [sic] limited system resources to                          
               storing hashes.  It would have been obvious...to include a server controlling a storage device in                     
               which pre-computed hashes would be placed and call that an authentication server” [answer-page                        
               5].  The examiner has no reasonable basis for this conclusion as the applied references clearly do                    
               not teach or suggest a central “archive server,” as claimed.  The examiner has offered no                             
               evidence that there would have been any advantage to storing pre-computed hashes in a central                         
               archive controlled by a server and it would appear that the only evidence of this, on the record, is                  
               appellants’ own disclosure.                                                                                           
                       While it is not clear what the examiner relies on for the teaching of the claimed                             
               “acquisition computers” and the “display stations,” the examiner’s statement that a “single                           
               computer could serve as both an acquisition and/or display computer” [answer-page 5-emphasis                          
               added] falls far short of an evidentiary showing of obviousness since the mere fact that                              
               something could be done does not, in and of itself, constitute obviousness within the meaning of                      
               35 U.S.C. § 103.                                                                                                      
                       While the examiner admits that Dyson does not teach the advantages of including an                            
               identifier with the hash, the examiner concludes that it would have been obvious to include such                      
               an identifier because, “without the identifier, it would be difficult to know which hash belongs to                   

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