Appeal 2007-2978
Application 10/744,130
retrieval of an XML of catalog information where the tagged document of XML
has a start and end tag. But we do not find any mention therein of numbering
catalog file segments or that the flags (i.e., the tags) “denot[e] whether or not a
catalog segment is the last catalog file segment.”
Furthermore, we do not find that the Examiner has provided an apparent
reason with logical underpinning to combine the various teachings of the
references to arrive at the claimed invention. While the Supreme Court, in KSR
Int'l Co. v. Teleflex Inc., 127 S.Ct. 1727, 82 USPQ2d 1385 (2007), has emphasized
“the need for caution in granting a patent based on the combination of elements
found in the prior art,” id. at 1739, 82 USPQ2d at 1395, and discussed
circumstances in which a patent might be determined to be obvious, emphasizing
that “the principles laid down in Graham reaffirmed the ‘functional approach’ of
Hotchkiss, 11 How. 248.” KSR, 127 S.Ct. at 1739, 82 USPQ2d at 1395 (citing
Graham v. John Deere Co., 383 U.S. 1, 12 (1966) (emphasis added)), and thereby
reaffirmed principles based on its precedent that “[t]he combination of familiar
elements according to known methods is likely to be obvious when it does no more
than yield predictable results,”Id, the Supreme Court has also made it clear that
“[f]ollowing these principles may be more difficult in other cases than it is here
because the claimed subject matter may involve more than the simple substitution
of one known element for another or the mere application of a known technique to
a piece of prior art ready for the improvement.” Id. The Court explained, “[o]ften,
it will be necessary for a court to look to interrelated teachings of multiple patents;
the effects of demands known to the design community or present in the
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