Appeal No. 2000-2012
Application No. 08/937,354
Abraham teaches these claimed elements. Therefore, we will not sustain the rejection
of claims 22 and 23.
35 U.S.C. § 103
To reject claims in an application under section 103, an examiner must
show an unrebutted prima facie case of obviousness. See In re Deuel,
51 F.3d 1552, 1557, 34 USPQ2d 1210, 1214 (Fed. Cir. 1995). In the
absence of a proper prima facie case of obviousness, an applicant who
complies with the other statutory requirements is entitled to a patent. See
In re Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir.
1992). On appeal to the Board, an applicant can overcome a rejection by
showing insufficient evidence of prima facie obviousness or by rebutting
the prima facie case with evidence of secondary indicia of
nonobviousness. See id.
In re Rouffet, 149 F.3d 1350, 1355, 47 USPQ2d 1453, 1455 (Fed. Cir. 1998). Here,
we find that the examiner has set forth a statement of a rejection at pages 3-8 of the
answer and has identified corresponding teachings in Abraham and identified the
differences between the prior art and the claimed invention, and addressed these
differences in the obviousness determination. Therefore, we find that the examiner has
established a prima facie case of obviousness. Therefore, the burden shifts to
appellants.
With respect to claim 5, appellants argue that the examiner has not appreciated
the definition of “survey database” found in the specification at page 2, lines 19-20.
(See brief at page 16.) We disagree with appellants and find that the specification
states that a survey database is an example of a static database and that a survey
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