Appeal No. 2004-0992
Application No. 09/560,458
advertising material, a client must, of necessity, be configured
to display such material. Instead, appellant argues that the
examiner’s inherency argument points to a rejection under
35 U.S.C. 102, rather than a rejection under 35 U.S.C. 103 (see
page 7 of the reply brief).
This argument is not persuasive because even if the examiner
could have made the rejection under 35 U.S.C. 102, rather than
under 35 U.S.C. 103, anticipation is the epitome of obviousness.
In re Fracalossi, 681 F.2d 792, 215 USPQ 569 (CCPA 1982).
The examiner’s position that in order for something to be
displayed, a system must be configured to display it, is so
reasonable to us that appellant must provide some reason why this
would not be the case. Appellant’s mere assertion, at page 8 of
the reply brief, that the examiner has not shown that Hidary must
function or perform in the claimed manner, does not, in our view,
overcome the examiner’s reasonable assertion of inherency, in
view of the rather broad scope of the instant claims. For
example, independent claim 15 merely requires a determination of
whether a client is configured to automatically insert and
display advertising material in association with other content;
and providing through a server access to the other content.
Clearly, Hidary provides access to content through the Internet
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