Appeal No. 2002-1311
Application No. 09/042,291
analogous art are misplaced. The holding in Larson is relevant to any case in which the facts
cannot be persuasively distinguished, which brings us to this case which is before us.
The examiner has improperly applied the holding of Larson as a per se rule. In other words, the
examiner finds that integrating any two things into one thing must be obvious regardless of the
individual facts in the case. Since the examiner has used a per se rule, the examiner has failed to
consider the particular problems associated with combining separate memories into a single
memory. It was improper for the examiner to apply the holding in Larson without regard for the
particular nature of the claimed subject matter.
We also agree with appellant that the examiner has failed to consider all the recitations of
the claimed invention. The claimed invention also recites that the Z comparison test is
performed in such a manner that the repaging of the memory element is reduced. The examiner
has not explained how the controller of Gonzalez-Lopez achieves this claimed result.
In summary, we find that the examiner has failed to consider the specific recitations of the
claimed invention, and the examiner has improperly applied the holding of Larson as a per se
rule of obviousness. Therefore, we do not sustain the examiner’s rejection of claims 1, 12, 19,
20 and 29.
Since we have not sustained the rejection of independent claims 1, 12 and 19, we also do
not sustain the examiner’s rejection of any of the dependent claims. We note for the record that
appellant’s arguments and the examiner’s arguments with respect to the St. Regis Paper Co. case
would be disposed of in the same manner as the arguments related to the Larson case.
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