Appeal No. 2004-2245
Application No. 10/145,544
The examiner’s response includes the claim that the
references are classified in similar classes/subclasses in the
classification system of the United States Patent and Trademark
Office (see pages 16-17 of the answer). Again, this goes to the
“commonality of elements” theory of combining references and
such, per se, is not enough to establish a proper motivation for
making the combination within the meaning of 35 U.S.C. § 103.
While we have doubts as to the showing, by the applied
references, of “descriptors corresponding to search terms in a
search request,” and “mapping the stored descriptors to location
information in a header area of an in-memory database table,” as
claimed, even if we assumed, arguendo, that the references do, in
fact, separately disclose all of the claimed steps/elements,
since the examiner has failed to articulate any convincing
rationale for combining the various steps/elements of the applied
references, we will not sustain the rejection of claims 52, 53,
55, 56, 58, and 59 under 35 U.S.C. § 103. Moreover, since the
additional references to Pohlmann, Carper, Dugan and Farrell do
not remedy the deficiencies of the examiner’s rationale, we also
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