Appeal No. 2006-1287 Page 5
Application No. 10/047,116
"Having determined what subject matter is being claimed, the next inquiry is
whether the subject matter would have been obvious." Ex Parte Massingill,
No. 2003-0506, 2004 WL 1646421, at *3 (Bd.Pat.App & Int. 2004). "In rejecting claims
under 35 U.S.C. Section 103, the examiner bears the initial burden of presenting a
prima facie case of obviousness." In re Rijckaert, 9 F.3d 1531, 1532, 28 USPQ2d 1955,
1956 (Fed. Cir. 1993) (citing In re Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d 1443,
1444 (Fed. Cir. 1992)). "'A prima facie case of obviousness is established when the
teachings from the prior art itself would appear to have suggested the claimed subject
matter to a person of ordinary skill in the art.'" In re Bell, 991 F.2d 781, 783, 26
USPQ2d 1529, 1531 (Fed. Cir. 1993) (quoting In re Rinehart, 531 F.2d 1048, 1051, 189
USPQ 143, 147 (CCPA 1976)). Of course, "deficiencies of the cited references cannot
be remedied by . . . general conclusions about what is 'basic knowledge' or 'common
sense' to one of ordinary skill in the art." In re Zurko, 258 F.3d 1379, 1385, 59
USPQ2d 1693, 1697 (Fed. Cir. 2001).
Here, although the examiner concludes that enabling a subsequent user to select
a recorded, but previously unselected, hyperlink to thereby access a linked hypertext
document "is an obvious action for the user to take and is taught by any
browsing session," (Examiner's Answer at 8), he offers no evidence to support that
conclusion. To the contrary, he admits that Rust fails to teach the feature. (Id. at 4.)
Page: Previous 1 2 3 4 5 6 7 8 Next
Last modified: November 3, 2007