Appeal No. 2004-2245
Application No. 10/145,544
independent claims which comprise, at most, three method steps or
two elements of an apparatus, is suspect. When reviewing the
examiner’s rationale, holding that Hull discloses retrieving
stored descriptors, mapping the stored descriptors, and mapping
to retrieve data; Judd teaches the use of search requests and
search terms; Shaughnessy teaches the use of location information
and the use of file headers; and Pereira teaches the use of in-
memory database tables, and that, therefore, it would have been
obvious to combine these references since they all “teach the use
of databases with tables, the use of indexes, the use of queries,
and the retrieving of data” (answer-page 5), it is apparent to us
that the examiner has employed impermissible hindsight, using the
instant claims as a blueprint and then picking and choosing only
so much of those elements of each reference as will support a
given position to the exclusion of other parts necessary for the
full appreciation of what the references fairly suggest to one of
ordinary skill in the art. This, of course, is impermissible
under 35 U.S.C. § 103. In re Wesslau, 353 F.2d 238, 241, 147
USPQ 391, 393 (CCPA 1965); In re Kamm, 452 F.2d 1052, 1057, 172
USPQ 298, 301-02 (CCPA 1972).
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