Appeal 2006-3117
Application 09/732,498
ISSUE
The pivotal issue in the appeal before us is as follows:
Have Appellants shown4 that the Examiner failed to establish that the
combined disclosures of Brown, Travaille, Leermakers and Gessel/Diwan
render the claimed invention unpatentable under 35 U.S.C. § 103(a)?
Particularly, would one of ordinary skill have found a sufficient rationale to
combine Brown, Travaille, Leermakers and Gessel/Diwan to yield the
claimed invention?
FINDINGS OF FACT
The following findings of fact are supported by a preponderance of
the evidence.
The Invention
1. Appellants invented a method and system (Figure 1) for collecting and
recording in an interactive data repository navigation and transaction data
pertaining to a customer’s use of an interactive television. (Specification 6.)
4 In the examination of a patent application, the Examiner bears the
initial burden of showing a prima facie case of unpatentability. In re
Piasecki, 745 F.2d 1468, 1472, 223 USPQ 785, 788 (Fed. Cir. 1984). When
that burden is met, the burden then shifts to the applicant to rebut. Id.; see
also In re Harris, 409 F.3d 1339, 1343-44, 74 USPQ2d 1951, 1954-55 (Fed.
Cir. 2005) (finding rebuttal evidence unpersuasive). If the applicant
produces rebuttal evidence of adequate weight, the prima facie case of
unpatentability is dissipated. Piasecki, 745 F.2d at 1472, 223 USPQ at 788.
Thereafter, patentability is determined in view of the entire record. Id.
However, Appellant has the burden on appeal to the Board to demonstrate
error in the Examiner’s position. See In re Kahn, 441 F.3d 977, 985-86,
78 USPQ2d 1329, 1335 (Fed. Cir. 2006) (“On appeal to the Board, an
applicant can overcome a rejection [under § 103] by showing insufficient
evidence of prima facie obviousness or by rebutting the prima facie case
with evidence of secondary indicia of nonobviousness.”) (quoting In re
Rouffet, 149 F.3d 1350, 1355, 47 USPQ2d 1453, 1455 (Fed. Cir. 1998)).
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