Appeal No. 2000-0264
Application No. 08/752,624 Page 5
657, 664 (Fed. Cir. 1985); ACS Hosp. Sys., Inc. v. Montefiore
Hosp., 732 F.2d 1572, 1577, 221 USPQ 929, 933 (Fed. Cir. 1984).
These showings by the examiner are an essential part of complying
with the burden of presenting a prima facie case of obviousness.
Note In re Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444
(Fed. Cir. 1992). If that burden is met, the burden then shifts
to the applicant to overcome the prima facie case with argument
and/or evidence. Obviousness is then determined on the basis of
the evidence as a whole. See id.; In re Hedges, 783 F.2d 1038,
1039, 228 USPQ 685, 686 (Fed. Cir. 1986); In re Piasecki, 745
F.2d 1468, 1472, 223 USPQ 785, 788 (Fed. Cir. 1984); and In re
Rinehart, 531 F.2d 1048, 1052, 189 USPQ 143, 147 (CCPA 1976).
Appellant asserts (brief, page 5) that "Kane does not
disclose or suggest a global paging system with different servers
in different countries being utilized and communicating via a
packet-switched network as claimed by applicant. Kane cannot
designate a secoud [sic] country as claimed by applicant."
Appellant further asserts (brief, page 7) that "[t]he references
are not combinable in the way provided in the rejection, and even
if they were the invention of claim 1 still cannot be met."
The examiner (answer, page 4) acknowledges that "Kane does
not disclose the E-mail message being sent to a second country
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