Appeal No. 2004-1890 6
Application No. 09/225,974
We consider next the Examiner’s 35 U.S.C. § 103(a) rejection of claims 1-3, 5-18,
63-75, 79-86, and 95-97 based on the combination of Carey and Suver. In rejecting 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, 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, 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.
With respect to each of the independent claims 1, 11, and 81, Appellant’s response
toto the Examiner’s 35 U.S.C. § 103(a) rejection asserts that the Examiner has failed to
establish a prima facie case of obviousness since all of the claimed limitations are not
taught or suggested by any of the applied prior art references. After careful review of the
applied prior art references, in light of the arguments of record, we are in general
agreement with Appellant’s position as stated in the Briefs.
Initially, we agree with Appellant (Brief, page 14; Reply Brief, page 4) that, in
contrast to the claimed invention, the Carey reference, relied on by the Examiner for an
alleged teaching of the claimed bindable data element feature, has no disclosure directed
to the specifying of binding rules. While the term “binding” does appear in the portions of
Carey cited by the Examiner, i.e., column 6, line 14 and column 20, line 6, the Examiner
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