Appeal No. 2001-1862
Application No. 09/102,044
the express teachings of Your Choice do not suggest the individual modifications in
combination with all of the other modifications. Similarly, the examiner has not provided
a convincing line of reasoning for the combination of all the modifications together as a
whole. While the examiner has addressed why each modification by itself may be
obvious, the examiner has not addressed the combination as a whole.
Appellants argue that the Office impermissibly used appellants’ application as a
blueprint to modify Your Choice to arrive at the claimed invention. (See brief at page
12.) While we would not characterize the examiner’s rejection as rising to the level of
impermissible hindsight reconstruction, we agree with appellants that the examiner has
not presented a prima facie case for the combination of all the well-known facts which
the examiner relied upon using Official Notice in the rejection. We find that the
examiner has not provided a teaching or convincing line of reasoning to suggest the
combination of all the well-known facts which the examiner relied upon Official Notices
in the rejection. Therefore, the examiner has not established a prima facie case of
obviousness, and we cannot sustain the rejection of independent claim 53 and its
dependent claims 54-58, 60 and 62. Therefore, for us to find that the computer
implemented method for issuing stored value cards affiliated with predetermined credit
network, as claimed by appellants, is taught or suggested by the combination of the
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