Appeal No. 1998-0630
Application 08/231,655
view of Sheth, Yourick, and Chang taught or would have suggested the combination of features of
claims 1 to 30 on appeal of a computerized information access system and method for presenting items
to users in order of ranking or relevance. Accordingly, we will reverse the examiner’s decision
rejecting claims 1 to 30 on appeal as being obvious under 35 U.S.C. § 103.
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 is expected to make the factual
determinations set forth in Graham v. John Deere Co., 383 U.S. 1, 17, 148 USPQ 459, 467 (1966),
and to provide a reason why one having ordinary skill in the pertinent art would have been led to
modify the prior art or to combine prior art references to arrive at the claimed invention. Such reason
must stem from some teaching, suggestion or implication in the prior art as a whole or knowledge
generally available to one having ordinary skill in the art. Uniroyal Inc. v. Rudkin-Wiley Corp., 837
F.2d 1044, 1051, 5 USPQ2d 1434, 1438 (Fed. Cir.), cert. denied, 488 U.S. 825 (1988); Ashland
Oil, Inc. v. Delta Resins & Refractories, Inc., 776 F.2d 281, 293, 227 USPQ 657, 664 (Fed. Cir.
1985), cert. denied, 475 U.S. 1017 (1986); ACS Hospital Systems, Inc. v. Montefiore Hospital, 732
F.2d 1572, 1577, 221 USPQ 929, 933 (Fed.
Cir. 1984). These showings by the examiner are an essential part of complying with the burden of
presenting a prima facie case of obviousness. Note In re Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d
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