Appeal 2007-2978
Application 10/744,130
marketplace; and the background knowledge possessed by a person having
ordinary skill in the art, all in order to determine whether there was an apparent
reason to combine the known elements in the fashion claimed by the patent at
issue.” Id. at 1740-41, 82 USPQ2d at 1396. The Court noted that “[t]o facilitate
review, this analysis should be made explicit.” Id., citing In re Kahn, 441 F.3d
977, 988, 78 USPQ2d 1329, 1336 (Fed. Cir. 2006) (“[R]ejections on obviousness
grounds cannot be sustained by mere conclusory statements; instead, there must be
some articulated reasoning with some rational underpinning to support the legal
conclusion of obviousness”). Although “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,” id, it remains a necessary requirement to establishing a
prima facie case of obviousness that some articulated reasoning with some rational
underpinning must be presented. The reasoning the Examiner has offered for
combining the teachings of Yamazoe and Vittal (FF 6: “in order to control catalog
entries in a marketplace”) not only does not explain why one of ordinary skill in
the art would provide a catalog gateway acknowledging each catalog file segment
received from the supplier or to number catalog file segments, including flags
denoting whether or not a catalog segment is the last catalog file segment, but does
not account for the fact that the claimed invention is described not simply in terms
of catalog entries but in terms of transferring large supplier catalogs in a data
transmission system through a business to business (B2B) gateway.
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