Appeal No. 1998-0724
Application No. 08/231,287
patentable. Be that as it may, it is the duty and obligation of the examiner to examine each
application; perform a search of the most relevant areas where relevant prior art is most
likely to be located; select the most relevant prior art, in the examiner's opinion; and
present a prima facie case of anticipation or obviousness to reject a claim, if appropriate,
based upon those most relevant prior art teachings. Otherwise, that claim is allowable
over the prior art of record.
Here, the examiner has found prior art references which arguably disclose portions
of the claimed invention. (See answer at page 3-10.) In the text of the rejections the
examiner never specifically addresses the language of any of the independent claims, but
merely argues the general concepts and the knowledge of those skilled in the art. We
disagree with the examiner’s conclusions concerning the claimed invention and find that
the examiner has not set forth a prima facie case of obviousness.
While we agree with the examiner that underlying software concepts used in
disparate technologies may be properly combined, the examiner must set forth a
convincing line of reasoning for the skilled artisan to look to those disparate technologies
to find relevant teachings and to combine these teachings.
Further, we agree with the examiner that those skilled in the art of computer
programming do reuse portions of programs to perform specific functions, but we find that
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