Appeal No. 2006-2584
Application No. 09/797,754
Spencer, assuming Spencer taught what the examiner indicates is taught, and
without indicating how such a combination would be made.
In the response to appellants’ arguments in this regard, the examiner
indicates at page 17 of the answer merely that there is a “reasonable expectation
of success” (without explaining why this is so) and that both references are
directed to search engines so that the skilled artisans would have recognized
their compatibility by implementing Spencer’s database for the index of Fish. It
is our view that the examiner’s rationale is not sufficient to establish a prima
facie case of obviousness.
While we agree with appellants for various reasons, we find most
compelling, appellants’ argument at pages 6-7 of the reply brief. Appellants
indicate thereat that Spencer uses “frequency” in the context of how often a
term appears in a document, as well as how often a term appears in a collection
of documents, whereas Fish uses “frequency” in the context of how people have
used parameters, values, and/or classifications in describing different types of
items. Accordingly, it would not appear reasonable that the skilled artisan
would seek to combine the disparate teachings of these references since they
appear to address different problems.
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