Appeal No. 1999-2311
Application 08/777,805
invention have been used to facilitate communications and
conversions between dissimilar networks or protocols and many
systems have been used for converting data from one format to
another format [answer, pages 9-13].
We agree with appellants that the record in this case
does not support the examiner’s rejection. As noted above,
the examiner has the burden of initially presenting a prima
facie case of obviousness. The examiner cannot satisfy this
burden by simply dismissing differences between the claimed
invention and the teachings of the prior art as being obvious.
In this case, the examiner must either present a cogent
rationale why the artisan would have been motivated to modify
the teachings of Barber to arrive at the claimed invention
which is supported by the record, or the examiner must present
us with an evidentiary record which independently supports the
finding of obviousness. The examiner’s only rationale for
modifying Barber is that the proposed modification would
enhance the overall system of Barber {answer, page 11]. The
fact that a claimed invention enhances a prior art system is
not evidence that the enhancement would have been obvious
within the meaning of 35 U.S.C. § 103. It does not matter how
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