Appeal No. 1999-1557
Application 08/650,397
lead that individual to combine the relevant teachings of the
references. In re Fine, 837 F.2d 1071, 1074, 5 USPQ2d 1596,
1598 (Fed. Cir. 1988). Only if this initial burden is met
does the burden of coming forward
with evidence or argument shift to the Appellant. Oetiker,
977 F.2d at 1445, 24 USPQ2d at 1444. See also Piasecki, 745
F.2d at 1472, 223 USPQ at 788 (“After a prima facie case of
obvious- ness has been established, the burden of going
forward shifts to the applicant.”). If the examiner fails to
establish a prima facie case, the rejection is improper and
accordingly merits reversal. Fine, 837 F.2d at 1074, 5 USPQ2d
at 1598.
An obviousness analysis commences with a review and
consideration of all the pertinent evidence and arguments.
See Oetiker, 977 F.2d at 1445, 24 USPQ2d at 1444 (“In
reviewing the examiner’s decision on appeal, the Board must
necessarily weigh all of the evidence and argument.”).
Considering independent claim 1, we note that it
requires “database systems” and “queries.” Having already
established that Naito does not teach the limitation of
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