Appeal No. 2001-0517
Application No. 08/586,611
increase data transfer rates by allowing benchmarking
during the simulation to obtain the optimal solution
for the block size. . . . It would have been obvious
. . . to combine Osterlund with the combined system of
Martins and Choudhary because it would allow the
combined system to optimize data transfer across busses
which require long delays.
Appellants argue each reference in detail at pages 5-9 of
the appeal brief and conclude (id. at page 9) that:
Insofar as each of the cited references is
representative of the old paradigm, Appellants
respectfully submit that nothing in the combination of
the cited references would motivate one skilled in the
art to embed a function including the limitations of
rejected claim 1 [or claim 8] in a circuit board to
dynamically determine the optimum access block size of
a system hard drive enabling the circuit board to
optimally interface with any hard drive.
In providing 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 forth 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 teaching, motivation, or suggestion
to select and combine the references relied on as
evidence of obviousness. See, e.g., McGinley v.
Franklin Sports, Inc., 262 F.3d 1339, 1351-52, 60
USPQ2d 1001, 1008 (Fed. Cir. 2001) (“the central
question is whether there is reason to combine [the]
references,” a question of fact drawing on the Graham
factors).
6
Page: Previous 1 2 3 4 5 6 7 8 9 10 Next
Last modified: November 3, 2007