Appeal No. 2004-0786
Application No. 08/935,116 Page 27
been obvious from the subject matter of claim 23 of the 5,306,196
patent, and that the examiner has failed to carry that burden.
From our review of claim 23, we agree with the appellants
that the examiner's assertions of what would have been an obvious
addition to claim 23 are unsupported by any evidence in the
record. The examiner's unsupported position is not a substitute
for evidence. In the absence of any evidence establishing the
obviousness of the limitations missing from claim 23, and the
lack of any evidence of why an artisan would have considered the
differences between claim 23 and claims 8, 9, 12 and 13, we find
that the examiner has failed to establish a prima facie case of
obviousness-type double patenting of claims 8, 9, 12 and 13.
Accordingly, the rejection of claims 8, 9, 12 and 13 under the
judicially created doctrine of obviousness-type double patenting
is reversed.
We turn next to the rejection of claims 10, 11 and 14 under
the judicially-created doctrine of obviousness-type double
patenting as being obvious over claims 18 and 26 of U.S. Patent
No. 5,201,010 in view of Tai. The examiner's position (answer,
page 7) is that “[i]t would have been obvious to one skilled in
the art to add the feature of a response being related to the
individual customer’s transaction data in shopping visits prior
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