Appeal No. 2001-0522
Application No. 08/887,830
[I]n the case where an icon corresponding to a program is of a
human shape, it is possible to instruct the execution of the program with a
feeling that a secretary exists in a computer when see [sic; seen] from a
user and a work for the program is requested upon the secretary.
Kojima at col. 43, ll. 32-36.
To the extent that the rejection may be based on the view that Kojima discloses
a graphical user interface and that the secretary (e.g., Fig. 47A) may be considered a
graphical object, we agree with the assessment. The secretary object may be directed,
as shown in Fig. 47A, to pick up a telephone receiver for placing a telephone call. Col.
22, ll. 12-30; col. 29, ll. 42-52. However, we do not find in this disclosure of Kojima’s
“second embodiment,” nor anywhere else in the reference, description of the graphical
functions required by the instant claims.
The allocation of burdens requires that the USPTO produce the factual basis for
its rejection of an application under 35 U.S.C. § § 102 and 103. In re Piasecki, 745
F.2d 1468, 1472, 223 USPQ 785, 788 (Fed. Cir. 1984) (citing In re Warner, 379 F.2d
1011, 1016, 154 USPQ 173, 177 (CCPA 1967)). It may not, because it may doubt that
the invention is patentable, resort to speculation, unfounded assumptions or hindsight
reconstruction to supply deficiencies in its factual basis. Warner, 379 F.2d at 1017, 154
USPQ at 178.
We do not sustain the rejection of claims 1-3, 5-9, 11-15, and 17-21 under 35
U.S.C. § 102 as being anticipated by Kojima.
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