Appeal No. 2002-2238
Application No. 09/107,768
Turning now to claims 7, 13, 17-23, and 28-30, the examiner
has found that Mahalingam discloses all of the claimed invention
except a lock-up condition triggering a failed hardware indication
(Examiner’s Answer, page 3, last two lines).
Again, the examiner has taken Official Notice in establishing
a prima facie case of obviousness as follows:
Official Notice is take [sic] with regards [sic] to the use
of Lock-ups as failed hardware indications in the art, Lock-
ups are a good indicator that a hardware device is
malfunctioning. It would have been obvious to a person of
ordinary skill in the art at the time the invention was made
to use a lock-up condition triggering the failed hardware
indication, as is know [sic] in the art, given Lock-ups are a
good indicator that a hardware device is malfunctioning
because when a device locks-up meaning not responding, it is
pretty clear that the hardware is malfunctioning and may need
to be replaced. (Paper 7, page 4, lines 1-7).
The appellants urge that this rejection is based on hindsight
reasoning, as Mahalingam contains no automated failure detection
or initiation of replacement operation in response to that
detection. (Appeal Brief, page 12, lines 6-9).
We are in agreement with the appellants that there is no
evidence of any suggestion in the cited reference to modify
Mahalingam to accomplish what is claimed. This is an instance
where hindsight has been utilized to reconstruct the appellants’
invention. See In re Warner, 379 F.2d 1011, 1017, 154 USPQ 173,
178 (CCPA 1967) (“The Patent Office has the initial duty of
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