Appeal No. 2003-0158
Application No. 09/514,570
engineering design or personal choices. Furthermore, appellants have shown no
criticality in the specific placement of the database storage device and, as such,
appellants are in a poor position to argue advantages which have not been disclosed.
In re Herr, 304 F.2d 906, 909, 134 USPQ 176, 178-79; In re Lundberg, 253 F.2d 244,
247, 117 USPQ 190, 192.
We also note that while appellants and the examiner refer to “first” and second”
storage in their arguments, independent claim 36, with which all the other claims stand
or fall, mentions only a “first” storage device.
In a third argument, at page 6 of the principal brief, appellants argue that Barakai
provides no teaching useful in modifying DeBan nor does the prior art suggest the
combination of Barakai with DeBan.
We agree that the examiner has provided insufficient motivation for combining
these references, for the reasons supra.
Appellants argue, at page 7 of the principal brief, that DeBan teaches away from
a combination with Hoffman. While we are not prepared to say that DeBan “teaches
away” from Hoffman, it is clear to us that there is nothing in Hoffman that would have
suggested to artisans that DeBan should be modified by anything in Hoffman in order to
arrive at the instant claimed invention.
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