Appeal No. 1998-0724
Application No. 08/231,287
Appellant argues that the examiner’s determination of unpatentability is improper
and the examiner has not evaluated the claimed invention under the proper obviousness
principles and standards to set forth a prima facie case of obviousness. (See brief at
page 12 and reply brief at page 8.) We agree with appellant.
In the supplemental answer, we note that the examiner goes on at length about the
motivation to combine “underlying software concepts” (see supplemental answer at page
2), reuse of portions of programs (see supplemental answer at page 3), principle of stare
decisis (Id.), software is “profoundly distinguished” and the examiner “bears a difficult and
substantial burden” in examining software related patent applications (see supplemental
answer at page 4), the standard for obviousness and hindsight (see supplemental answer
at pages 5-6), the invention must “clearly distinguish” over the prior art (see supplemental
answer at page 6), “all reasonable interpretations” of the claim language (see
supplemental answer at page 7), and the examiner’s summary of the invention and opinion
on patentability. Similar discussions are made throughout the answer.
To summarize our opinion, we find that the examiner’s rejection is not solidly based
upon the prior art references which he has relied upon in the rejection. It is clear to us that
the examiner strongly believes that the claimed invention should not be
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