Appeal No. 2003-0182 Page 7
Application No. 09/532,579
We also observe that 35 U.S.C. § 103 does not require an applicant to cite
criticality for differences between the claimed invention and the prior art. Rather, the
test for obviousness is what the combined teachings of the references would have
suggested to one of ordinary skill in the art. See In re Young, 927 F.2d 588, 591, 18
USPQ2d 1089, 1091 (Fed. Cir. 1991) and In re Keller, 642 F.2d 413, 425, 208 USPQ
871, 881 (CCPA 1981). The mere fact that the prior art could be so modified would not
have made the modification obvious unless the prior art suggested the desirability of
the modification. See In re Fritch, 972 F.2d 1260, 1266, 23 USPQ2d 1780, 1783-84
(Fed. Cir. 1992); In re Mills, 916 F.2d 680, 682, 16 USPQ2d 1430, 1432 (Fed. Cir.
1990); In re Gordon, 733 F.2d 900, 902, 221 USPQ 1125, 1127 (Fed. Cir. 1984).
In this instance, the examiner has adduced no factual basis in the record to
support the position that it would have been obvious to store Rosen’s user profile in
memory on the mobile communication system rather than on the resolution server.2
We thus find ourselves in agreement with appellant that the examiner’s conclusion of
obviousness is grounded on unfounded assumptions or impermissible hindsight to
supply deficiencies in the factual basis. We are therefore constrained to reverse the
examiner’s rejection of claims 1, 11 and 18, as well as claims 2-5, 7, 10, 12, 16 and 17
depending from claims 1 and 11.
2 Obradovich is relied upon merely for its teaching of the use of a personal communications
device (PCD) in a GPS system. To the extent that Rosen might not be considered to teach the use of a
hand-held computer as the mobile communication system 130, the examiner has determined that
Obradovich would have suggested such.
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