Appeal No. 2006-2070
Application No. 09/986,586
that the parameter could be related to other things such as how
many turns defeating the enemy took, what weapons were used, and
how much damage was inflicted upon the enemy (answer, page 6).
Relating the parameter to how soundly the enemy was beat would
have been obvious to one of ordinary skill in the art, the
examiner argues, because, although Ohnuma rewards players equally
for defeating the monster, rewarding players who defeat the
monster especially well would provide more satisfaction for the
players (answer, pages 5-6).
The examiner’s argument is not supported by evidence. Thus,
the record indicates that the examiner’s rationale is based upon
impermissible hindsight in view of the appellants’ disclosure.
See W.L. Gore & Associates v. Garlock, Inc., 721 F.2d 1540, 1553,
220 USPQ 303, 312-13 (Fed. Cir. 1983), cert. denied, 469 U.S. 851
(1984); In re Rothermel, 276 F.2d 393, 396, 125 USPQ 328, 331
(CCPA 1960).
The examiner argues that the appellants’ term “enemy
character” encompasses a challenge (answer, page 17). Thus, the
examiner argues, the challenge of moving through the cavern
quickly can be considered the enemy character (answer, pages 17-
18). The examiner does not provide evidence that one of ordinary
skill in the art, giving the appellants’ claim their broadest
reasonable interpretation in view of the specification, would
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