Appeal No. 2002-2318
Application 09/652,520
Pirolli with Pouschine. On Page 5 of the answer, the
examiner suggests that Pouschine’s teaching essentially
invites one of ordinary skill in the art to “investigat[e]
techniques for deciding what to pre-calculate.” Thus, the
examiner seems to suggest that it would have been obvious to
try various techniques in the system of Pouschine so that
one of ordinary skill in the art could decide what to pre-
compute [answer, page 5]. However, it is well settled that
the "obvious to try" standard does not constitute
obviousness. In re Deuel, 51 F.3d 1552, 1559, 34 USPQ2d
1210, 1216 (Fed. Cir. 1995)(“A general incentive does not
make obvious a particular result, nor does the existence of
techniques by which those efforts can be carried out.”).
Merely because Pouchine’s modeling system does not require
pre-calculation of all data cells is hardly an adequate
reason why the skilled artisan would rely on Pirolli’s
teaching of using a threshold to determine the most visited
web pages. We are compelled to find that the only
motivation for combining Pirolli with Pouschine stems from
impermissible hindsight by reconstructing the invention
using the claims as a template.
We recognize that “[a]ny judgment on obviousness is in
a sense necessarily a reconstruction based upon hindsight
reasoning.” Ex parte Rodgers, 27 USPQ2d 1738, 1748 (Bd.
Pat. App. & Int’f 1992). However, such a reconstruction
must not include knowledge gleaned solely from appellants’
-8-
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 Next
Last modified: November 3, 2007