Appeal No. 20004-0226
Application No. 09/216,184
Thus, it is appellants’ position that Azadegan accepts entries having a value of
zero in the interest matrix while the instant claimed invention does not accept entries
having a value of zero in the interest matrix. Appellants contend that the necessary
modification to Azadegan, in order to meet the instant claimed subject matter, would be
to exclude entries having a value of zero from the interest matrix, but to do so would
contradict the express teachings of Azadegan.
We will sustain the rejection of claims 1 and 3-8 under 35 U.S.C. §103 but we will
not sustain the rejection of claims 14-17 and 19-29 under 35 U.S.C. §103.
We agree with appellants that since Azadegan permits a zero entry in the interest
matrix, it cannot teach or suggest “including only non-zero values in an interest matrix”
as recited in independent claims 14 and 21. The examiner’s position “that if the user is
only concerned with setting quality priorities with non-zero values in the interest matrix
as shown in Figure 21 of Azadegan . . . then the zero priority value within the interest
matrix of Azadegan . . . may certainly be taken out from the interest matrix entry”
(answer-page 3) is clearly an argument based on hindsight. One may say that zero
entries may be taken out of the interest matrix if the user wished to do so, but the
question is, rather, where is it suggested that a user may wish to do this, and the
answer is, quite clearly, only in appellants’ disclosure. It is the instant disclosure which
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