Appeal 2007-1597
Application 10/887,525
Motivation
Appellants argue there is no motivation to combine Holm and AAPA
because Holm reveals no need for preventing denial-of-service attacks
through Holm’s system (Br. 24). Appellants further assert that Holm is
concerned with processing PCI interrupts in logically partitioned computer
systems, and not with preventing denial-of-service attacks (id.). Appellants
conclude the Examiner has impermissibly relied upon hindsight in
formulating the rejection (Br. 30).
In rejecting claims under 35 U.S.C. § 103, it is incumbent upon the
Examiner to establish a factual basis to support the legal conclusion of
obviousness. See In re Fine, 837 F.2d 1071, 1073, 5 USPQ2d 1596, 1598
(Fed. Cir. 1988). In so doing, the Examiner must make the factual
determinations set forth in Graham v. John Deere Co., 383 U.S. 1, 17, 148
USPQ 459, 467 (1966). In addition to the findings under Graham, there
must also be “some articulated reasoning with some rational underpinning to
support the legal conclusion of obviousness.” See In re Kahn, 441 F.3d 977,
988, 78 USPQ2d 1329, 1336 (Fed. Cir. 2006), cited with approval in KSR
Int’l Co. v. Teleflex Inc.,127 S. Ct. 1727, 1741, 82 USPQ2d 1385, 1396
(2007). “[H]owever, the analysis need not seek out precise teachings
directed to the specific subject matter of the challenged claim, for a court
can take account of the inferences and creative steps that a person of
ordinary skill in the art would employ.” KSR, 127 S. Ct. at 1741, 82
USPQ2d at 1396.
With respect to the issue of hindsight, in KSR the U.S. Supreme
Court reaffirmed that “[a] factfinder should be aware, of course, of the
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