Appeal No. 2001-0331 Page 7
Application No. 09/122,982
From the language of 37 CFR § 1.75(d)(1), we find that the claim
language requires either antecedent basis or clear support in the
specification. From the portions of the specification referred
to, supra, we find clear support in the specification for the
term “automatically" found in appellants' claims, and
accordingly, find the claim language to be definite within the
meaning of 35 U.S.C. § 112, second paragraph. We therefore
reverse the rejection of claims 1-11, 13-23, and 25-35 under 35
U.S.C. § 112, second paragraph.
We turn next to the rejection of claims 1-4, 9-11, 13-16,
21-23, 25-28, 33-35, and 37 under 35 U.S.C. § 103(a) as
unpatentable over Hoffman or Netscape 2 or Pegasus.
In rejecting claims under 35 U.S.C. § 103, it is incumbent
upon the examiner to establish a factual basis to support the
legal conclusion of obviousness. See In re Fine, 837 F.2d 1071,
1073, 5 USPQ2d 1596, 1598 (Fed. Cir. 1988). In so doing, the
examiner is expected to make the factual determinations set forth
in Graham v. John Deere Co., 383 U.S. 1, 17, 148 USPQ 459, 467
(1966), and to provide a reason why one having ordinary skill in
the pertinent art would have been led to modify the prior art or
to combine prior art references to arrive at the claimed
invention. Such reason must stem from some teaching, suggestion
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 Next
Last modified: November 3, 2007