Appeal No. 2002-0124
Application No. 09/192,842
discount promotion, and etc.” (answer, page 5) “in order to
provide complete coupon information...” (answer, page 5).
In our view, as in appellants’, the examiner’s rationale is
a blatant and classic hindsight rejection somewhat akin to the
discredited “obvious to try” standard of obviousness, i.e., even
though Day offers no suggestion or reason for generating a
“products-of-interest” report and a “coupons-to-expire” report,
the examiner’s position appears to be that it would have been
obvious to try to generate these and/or any other types of
reports merely because this is what appellants have done and
because Day generates a certain customized list of special
offers.
Obviousness is tested by what combined teachings of prior
art references would have suggested to those of ordinary skill in
the art, not by whether particular combinations of elements would
have been “obvious to try.” In re Fine, 837 F.2d at 1075,
5 USPQ2d at 1599 (Fed. Cir. 1988). Also see In re Geiger,
815 F.2d 686, 688, 2 USPQ2d 1276, 1278 (Fed. Cir. 1987); In re
Goodwin, 576 F.2d 375, 377, 198 USPQ 1, 3 (CCPA 1978). But
whether a particular combination might be “obvious to try” is not
a legitimate test of patentability.
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