Appeal No. 2006-1595
Application No. 09/798,484
We will not sustain the examiner’s obviousness rejection of independent
claims 7, 21, and 23. We agree with appellants that there is no reasonable
motivation for the skilled artisan to combine the isolated teachings of the four
references in the manner suggested by the examiner essentially for the reasons
noted by appellants. We add, however, that the examiner’s reasons to combine
the four references essentially asserts the very advantages that the claimed
invention was designed to achieve. In our view, nothing in the references
expressly or implicitly suggests achieving these advantages apart from
appellants’ own disclosure. Furthermore, we find no teaching or suggestion in
the prior art to (1) determine whether a stand-alone source code simulation is to
be performed, and (2) specify a first or second library configuration depending on
the initial determination as claimed. In our view, the examiner has simply
selected the claimed features admitted to be missing from Burgoon from the
secondary references and reconstructed the claimed invention using only
appellants' own disclosure as a blueprint. Therefore, we will not sustain the
examiner’s obviousness rejection of independent claims 7, 21, and 23. Since we
do not sustain the examiner's rejection of independent claim 7, we likewise do
not sustain the examiner's rejection of dependent claims 8-11.
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