Appeal 2007-1271
Application 10/005,583
recourse to common sense, however, are neither necessary under our case
law nor consistent with it.” KSR Int’l Co. v. Teleflex Inc., 127 S. Ct. 1727,
82 USPQ2d at 1397. Here, we agree with Appellant that a person of
ordinary skill in the art would not have reasonably looked to Somashekar to
provide a server capability that was already provided by Kuwata. In the
record before us, we find only the language of the instant claims suggests
such a combination (see claims 10, 14, and 17). Therefore, we conclude that
an artisan having common sense at the time of the invention would not have
reasonably considered embedding a server within an existing server in the
manner suggested by the Examiner.
MAPPING OF ISSUES TO SPECIFIC CLAIMS
Independent claims 1, 9, and 13
We note that the patentability of independent claims 1, 9, and 13 turns
upon our findings of fact with respect to Issues 1 and 2. Because we have
found that the weight of the evidence supports the Examiner’s position on
Issues 1 and 2, we will sustain the Examiner’s rejection of independent
claims 1, 9, and 13.
Dependent claim 2
We note that patentability of dependent claim 2 turns upon our finding
of fact with respect to Issue 3. Because we have found supra that the weight
of the evidence supports Appellant’s position with respect to Issue 3, we will
reverse the Examiner’s rejection of dependent claim 2 as being anticipated
by Kuwata.
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