Appeal No. 2002-0145
Application No. 09/090,990
instant invention.
But, even if the HTML specification were to change, the
claims would still be definite to the extent of the instant claim
language. For example, in claim 1, it would still be required
that an HTML document be created, that designated recipients are
checked for HTML capability and that the document is sent to the
designated recipients in accordance with that HTML capability.
Thus, the language of the claim is definite, no matter how the
specifics of HTML format might change in the future.
Accordingly, we will not sustain the rejection of claims
1-30 under 35 U.S.C. § 112, second paragraph.
Turning to the rejection of the 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, 1073-74, 5 USPQ2d 1596, 1598 (Fed. Cir.
1988). In so doing, the examiner is expected to make the factual
determinations set forth in Graham v. John Deere Co., 383 U.S. 1,
17-18, 148 USPQ 459, 467 (1966), and to provide a reason why one
having ordinary skill in the pertinent art would have been led to
modify the prior art or to combine prior art references to arrive
at the claimed invention. Such reason much stem from some
teachings, suggestions or implications in the prior art as a
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