Appeal 2007-0610
Application 09/766,357
Appellant has presented no objective evidence of nonobviousness to
dislodge a determination that the claimed subject matter is obvious. FF 13.
There being no material dispute concerning the Graham inquiries,
claim 1 is unpatentable under §103 as long as there is “some articulated
reasoning with some rational underpinning to support the legal conclusion of
obviousness.” KSR Int’l v. Teleflex Inc., 127 S.Ct. 1727, 1741, 82 USPQ2d
1385, 1396 (2007) (quoting Kahn).
Appellant argues that “[n]o teaching, suggestion, or incentive is
present to combine the teachings of Kent with the teaching of Cornuejols in
the manner asserted by the Examiner.” Appeal Br. 13. In point of fact, the
Examiner has argued that “[i]t would have been obvious to modify the
optimization model feature of Kent to include any one of the transportation
model, network model, or generalized network model taught by Cornuejols
to advantageously provide a quick and intuitive approach to customizing a
layout (Cornuejols at § 11.1).” Answer 4. FF 11. Accordingly, the Examiner
has articulated a reason why one practicing the Kent method would look to
Cornuejols for an optimization model.
Appellant challenges the Examiner’s reasoning for finding the
claimed combination obvious on the grounds that “[t]he Examiner may not
merely state that the modification would have been obvious to one of
ordinary skill in the art without pointing out in the prior art a suggestion of
the desirability of the proposed modification.” However, the Examiner’s
rationale was taken literally from Cornuejols (see section 11.1 which uses
the same terms ”quick” and “intuitive” to describe the advantages in using
network optimization) and therefore, contrary to Appellant’s argument the
Examiner did point out in the prior art a suggestion of the desirability of the
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