Appeal No. 2004-0098
Application No. 09/393,082
switching network example described at page 211 et seq. The rejection has failed to
identify any convincing reason why the artisan would have been led to apply the
principles taught by Lam to compilers, or specifically to the “bytecode sequence tree
data structure” as claimed by appellants. The mere fact that the prior art could be
modified to result in the claimed invention would not have made the modification
obvious unless the prior art suggested the desirability of the modification. See, e.g., In
re Laskowski, 871 F.2d 115, 117, 10 USPQ2d 1397, 1398 (Fed. Cir. 1989). Prior art
references in combination do not make an invention obvious unless something in the
prior art would suggest the advantage to be derived from combining their teachings. In
re Sernaker, 702 F.2d 989, 995-96, 217 USPQ 1, 6-7 (Fed. Cir. 1983). We cannot
sustain the Section 103 rejection of the claims.
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