Appeal 2007-0469
Application 10/299,618
The Obviousness Rejections
We next consider the Examiner’s rejection of claims 7, 9-11, 20, 22,
24, 25, 27, 31, and 32 under 35 U.S.C. § 103(a) as unpatentable over Hicks
in view of Hamalainen. 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 must make the
factual determinations set forth in Graham v. John Deere Co., 383 U.S. 1,
17, 148 USPQ 459, 467 (1966). Furthermore, “‘there must be some
articulated reasoning with some rational underpinning to support the legal
conclusion of obviousness’ . . . . [H]owever, the analysis need not seek out
precise teachings directed to the specific subject matter of the challenged
claim, for a court can take account of the inferences and creative steps that a
person of ordinary skill in the art would employ.” KSR Int’l Co. v. Teleflex
Inc., 127 S. Ct. 1727, 1741, 82 USPQ2d 1385, 1396 (2007) (quoting In re
Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)).
If the Examiner’s burden is met, the burden then shifts to the
Appellant to overcome the prima facie case with argument and/or evidence.
Obviousness is then determined on the basis of the evidence as a whole and
the relative persuasiveness of the arguments. See In re Oetiker, 977 F.2d
1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir. 1992).
Regarding claims 7 and 9-11, the Examiner’s rejection essentially
finds that Hicks teaches every claimed feature except that the device
independent language is XML (claims 7 and 9) or the transforms written in
XSL (claims 10 and 11). The Examiner, however, cites Hamalainen as
teaching these features and concludes that it would have been obvious to one
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