Appeal No. 2004-2258
Application 10/145,543
not, in itself, a proper basis on which to conclude obviousness of the claimed subject
matter within the meaning of 35 U.S.C. § 103. The examiner must set forth some
reason why the skilled artisan would have combined the references in the manner
sought by the examiner in order to arrive at the instant claimed subject matter. What is
it about the commonality of certain elements that would have led the artisan to have
modified a search request of Wittgreffe to specify a number of results to be retrieved, as
alleged to be taught by Peltonen and further modified to locate data in an in-memory
database table, as alleged to be disclosed by Pereira or Hooper? The examiner does
not expressly say.
Because the examiner has neither established a teaching or suggestion in the
prior art for the claimed “in-memory database table,” nor a convincing rationale for
combining the prior art references in such a manner as to reach the instant claimed
subject matter, we will not sustain the rejection of independent claims 25, 34, and 43
under 35 U.S.C. § 103. Moreover, since none of the many other references, cited for
limitations of the dependent claims, is seen to provide for the deficiencies of Wittgreffe,
Peltonen, Hooper and Pereira, we also will not sustain the rejection of claims 26-33, 35-
42, 44-51, and 76-81 under 35 U.S.C. § 103.
Our decision herein should not be construed to mean that a different application
of the applied references, along with a convincing rationale as to the obviousness of
providing for an in-memory database table, and a proper reason for combining certain
references, may not have been successful in providing the requisite evidence of
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