Appeal No. 2001-1507
Application No. 08/972,129
compilation, and Hsieh et al., inherently teach the claimed invention despite signature.”
(See answer at page 16.) We disagree with the examiner and find that the examiner is
attempting to reconstruct appellants’ claimed invention using impermissible hindsight to
pick and choose various discrete components of appellants’ claimed invention and
generalize therefrom to meet the language of independent claim 1. The examiner
addresses the appellants’ hindsight argument at pages 16-18 and relies on many items
being well known and other items being taught by each of the references and
corresponding to the level of description in appellants’ specification. The examiner
maintains that since both references disclose Java byte code which is disclosed in
appellants’ specification and since both references both suggest missing elements
which are missing in the other reference that it would have been obvious to one of
ordinary skill in the art at the time of the invention to combine the teaching for
enhancing execution time of the Java byte code and also conforming to security policy
enforcement. We disagree with the examiner’s conclusion and rationale and find that it
is not supported by the teachings in the references nor by a convincing line of
reasoning. Therefore, we find that the examiner has not established a prima facie
case of obviousness of the claimed invention, and will not sustain the rejection of
independent claim 1 and its dependent claims 2-6.
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