Appeal No. 2006-1778
Application 09/776,364
to combine the teachings of Slutz with those of Fujimori, and that Fujimori is not
analogous art in accordance with existing case law pecedent. Plainly, Fujimori, being
an electronic musical instrument environment, is not in the same field of invention as
the test systems of Slutz and we are convinced, based upon consideration of this
reference and appellant’s arguments, that Fujimori would not have been reasonably
pertinent to the artisan to the subject matter of Slutz and the present invention.
Notwithstanding the examiner’s repeated efforts in the answer and the
supplemental answer to convince us of the propriety of combining Fujimori with
Slutz, we simply can not agree with the examiner’s rationales and must necessarily
conclude that the examiner has exercised prohibited hindsight in attempting to
combine the teachings of Fujimori with Slutz. Because the examiner has not
convinced us of the propriety to sustain the rejection of claims 5 through 13 in the first
stated rejection relying upon Slutz in view of Fujimori, we must necessarily reverse
the second and third stated rejections which also rely upon these two references even
though additional teachings in Talley and Walls do not make up for the weakness of
the applicability of Fujimori which is relied upon for all of the rejections. Therefore,
to the extent the examiner rejects claims 3 through 14, 17 through 21 and 23 through
32, in the first three stated rejections, they are all reversed.
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