Appeal No. 2004-1537 4
Application No. 09/206,597
the traffic, as suggested by Jones, in order to upgrade the system and adapt to the new
technology, i.e., packet switching.” In response, appellants argue (brief, page 4) that:
Jones is only concerned with prioritizing to avoid paths within an ATM switch
which have greater delays, not with identifying priority packets so that low
priority traffic is transported on the faulty path. Hence it would not be obvious
without hindsight to look for references such as Jones for improving a
protection scheme, and even if Jones was considered it does not suggest
combining features of packet and [Ikeuchi’s] circuit switching schemes
together, let alone the particular features of the claim.
We agree with appellants’ arguments. The record before us is completely silent as
to the reasons expressed by the examiner for combining the teachings of Ikeuchi and
Jones. The factual question of motivation to combine the teachings of the references
should be resolved based on evidence of record, and not on the subjective belief and
unknown authority expressed by the examiner. In re Lee, 277 F.3d 1338, 1343-44, 61
USPQ2d 1430, 1434 (Fed. Cir. 2002). In the absence of a factual basis in the record for
substituting packets as taught by Jones for the signals transmitted by Ikeuchi, we must
agree with the appellants that the examiner has resorted to improper hindsight to
demonstrate the obviousness of the claimed invention. Thus, the obviousness rejection of
claims 17 and 18 is reversed.
The obviousness rejections of claims 3 through 5 are reversed because the
admitted prior art and Mao fail to cure the noted shortcoming in the teachings of Ikeuchi
and Jones.
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