Appeal No. 97-1223 Page 6
Application No. 08/147,143
We next recall that in rejecting claims under 35 U.S.C.
§ 103, the patent examiner bears the initial burden of
establishing a prima facie case of obviousness. A prima facie
case 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. If the
examiner fails to establish a prima facie case, an obviousness
rejection is improper and will be overturned. In re
Rijckaert, 9 F.3d 1531, 1532, 28 USPQ2d 1955, 1956 (Fed. Cir.
1993). With this in mind, we analyze the examiner’s
rejections.
Rejection of Claims 1-13 and 39
Regarding independent claim 1, the examiner notes Capps
teaches a pen-based computer system comprising a CPU, ROM,
RAM, mass storage, display, and button area. (Examiner’s
Answer at 3.) He admits Capps does not teach a return to menu
button. (Id. at 4.) Based on Soviero’s depiction of a menu
button and the examiner’s assertion that a table of contents
is inherent to a book, the examiner concludes it would have
been obvious to design a return to menu button in Capps so
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