Appeal No. 2004-2245
Application No. 10/145,544
The examiner chooses various elements of each reference and
combines them with elements of the other references merely
because 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). This is not a convincing reason which would
have led the artisan to make the combination. We agree with
appellants when they state, at page 17 of the principal brief,
that this analysis “relating to the degree of commonality of
elements among the references is irrelevant, as it fails to apply
the proper standard as set forth in the MPEP.”
The MPEP § 2143.01 suggests possible reasons for leading the
artisan to make a particular combination. They include the
nature of the problem to be solved, the teachings of the prior
art, and the knowledge of persons of ordinary skill in the art.
They do not include, as a reason for combining references, a
mere, possibly coincidental, commonality of elements. The
examiner would need to show specifically what it is about this
commonality of elements that would have led the artisan to make
the proposed combination, without using appellants’ claims as a
guide to making the combination.
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