Appeal No. 1998-0669 Page 5
Application No. 08/507,194
prima facie case of obviousness. In re Oetiker, 977
F.2d 1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir.
1992). Only if that burden is met, does the burden
of coming forward with evidence or argument shift to
the applicant. Id. "A prima facie case of
obviousness 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." In re Bell, 991 F.2d 781, 782,
26 USPQ2d 1529, 1531 (Fed. Cir. 1993) (quoting In re
Rinehart, 531 F.2d 1048, 1051, 189 USPQ 143, 147
(CCPA 1976)). If the examiner fails to establish a
prima facie case, the rejection is improper and will
be overturned. In re Fine, 837 F.2d 1071, 1074, 5
USPQ2d 1596, 1598 (Fed. Cir. 1988).
With these in mind, we address the following issues:
• obviousness of claims 1-12 and 15-27
• obviousness of claims 13, 14, 28, and 29.
Obviousness of Claims 1-12 and 15-27
Regarding claims 1-12 and 15-27, the appellant argues,
“the dividing step of the image of the document is not
disclosed or suggested by Watanabe et al.” (Reply Br. at 4.)
He adds, “as Watanabe et al do not indicate whether the
insertion, deletion, replacement, etc. operates on character
codes or character images which have been input, it is
improper to jump to the conclusion that the editing means
operates on character images which have been input.” (Id. at
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