Appeal No. 2002-2259
Application No. 09/083,959
processors, as recited in independent claims 1, 4, 17, 26 and 32,
cannot be derived from the combination of the references.
We also disagree with the Examiner’s stated reasons for
combining Appellants’ admitted prior art with Milne, Alpert and
Kinoshita. Notwithstanding the Examiner’s arguments that the
combination is based on the need for identifying the existing
processors, microprocessor compatibility in a multiprocessor
system and reducing user intervention, we agree with Appellants
that such combination is made in terms of the problems and
solutions disclosed by Appellants (brief, page 11). The
“Background” section of Alpert merely discusses the need for
identifying the type of a processor (col. 1, lines 13-15) while
Kinoshita is concerned with checking the compatibility of
generation numbers among existing processors before starting to
use a multiprocessor system (col. 1, lines 21-24). Thus, the
only possible suggestion to combine these separate teachings must
have come not from the references themselves, but from the
Appellants’ disclosure based on impermissible hindsight.
Whereas, our reviewing court requires that particular findings
must be made as to the reason the skilled artisan, with no
knowledge of the claimed invention, would have selected and
modified the prior art teachings for combination in the manner
9
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 Next
Last modified: November 3, 2007