Appeal No. 2002-0040 Page 6
Application No. 08/937,392
The reference even explains why Duda chose not to use a global index for its invention.
Specifically, “the space needed for this approach is prohibitively large, and a global
index is very difficult to keep up to date. In addition, there would still be some need to
organize the heterogeneous data for browsing.” P. 127. Because the global index is
not part of Duda’s invention, the examiner fails to show it is found in exactly the same
situation and united in the same way as the claimed catalog of files stored on a
network. The absence of such a showing "negates anticipation." Kloster Speedsteel
AB v. Crucible, Inc., 793 F.2d 1565, 1571, 230 USPQ 81, 84 (Fed. Cir. 1986).
Therefore, we reverse the anticipation rejection of claims 4 and 6.
“[T]o establish obviousness based on a combination of the elements disclosed in
the prior art, there must be some motivation, suggestion or teaching of the desirability
of making the specific combination that was made by the applicants.” In re Kotzab, 217
F.3d 1365, 1370, 55 USPQ2d 1313, 1316 (Fed. Cir. 2000) (citing In re Dance, 160 F.3d
1339, 1343, 48 USPQ2d 1635, 1637 (Fed. Cir. 1998); In re Gordon, 733 F.2d 900, 902,
221 USPQ 1125, 1127 (Fed. Cir. 1984)). “[T]he factual inquiry whether to combine
references must be thorough and searching.” McGinley v. Franklin Sports, Inc., 262
F.3d 1339, 1351-52, 60 USPQ2d 1001, 1008(Fed. Cir. 2001). “This factual question . .
. [cannot] be resolved on subjective belief and unknown authority.” In re Lee, 277 F.3d
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