Appeal No. 1998-2692
Application 08/512,239
We now consider Group III (claims 10 and 16-18) with
claim 10 as the representative claim. The examiner’s
rejection does not initially address the particular limitation
of claim 10. Appellant argues that the claimed transmission
of data from the user apparatus back to the remote controller
is neither shown nor suggested by the applied prior art
[brief, page 10]. The examiner responds that
this transmission and reception of
data in a direction reverse to the
“normal” direction, as argued, has not
solved any stated problem or is for
any particular purpose; therefore, the
[examiner] maintains Lambropoulos et
al. in view of Boyles et al.’s
teaching of securely transferring data
is at least fully functionally
equivalent to Appellant’s claimed
invention [answer, page 9].
We agree with the position argued by appellant. The
examiner’s rejection fails to establish a prima facie case of
obviousness. Functional equivalence and the solution of
specific problems are not, per se, the appropriate
determinants of obviousness. The examiner has failed to
properly address the obviousness of the differences between
the claimed invention and the applied prior art. Therefore,
10
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