Appeal No. 2002-2013
Application 09/036,699
examiner must provide a factual basis to support an obviousness conclusion. In re Warner, 379
F.2d 1011, 1017, 154 USPQ 173, 177 (CCPA 1967). A determination of obviousness must be
based on facts and not on unsupported generalities. In re Freed, 425 F.2d 785, 787, 165 USPQ
570, 571 (CCPA 1970). Here, the examiner has failed to set forth sufficient evidence in support
of an obviousness rejection.
For the foregoing reasons, the rejection of claims 9 and 16-17 as being unpatentable over
Barrett cannot be sustained.
The examiner has rejected claims 22, 23 and 25 under 35 U.S.C. § 103 as being obvious
over Barrett. Claims 23 and 25 each depends from claim 22 and thus includes all the limitations
of claim 22. Under Graham v. John Deere Co., 383 U.S. at 17-18, 148 USPQ at 467, one of the
underlying facts the examiner must determine is the differences between the claimed invention
and the prior art. In that regard, the examiner found (Answer at 4):
Barrett does not explicitly show that the URLs are prefetched to a remote proxy
server because URLs are prefetched to a remote client . . . .
To account for that difference, the examiner states (Answer at 8):
[H]owever, Barrett teaches the use of internet and suggests that the internet 12
includes numerous servers, storage, repositories, communication links, etc.
Barrett further teaches that general architecture of the internet is well known in
the art (see column 6, lines 51-58). Therefore, it would have been obvious for
one of ordinary skill in the art at the time the invention was made to modify
Barrett by sending URLs to a proxy server or any one of servers, storage,
repositories, communication links in the internet environment because the use of
proxy servers are old and well known in the art. In addition, sending URLs to a
different destination is not a patentable distinction, and it is only a design choice.
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