Appeal No. 2001-0677
Application No. 08/974,575
At the outset, we note that the examiner has set forth a prima facie case of
obviousness with respect to independent claim 1 addressing all the limitations recited in
independent claim 1. The examiner maintains that the claimed invention would have
been suggested by the combination of Cuomo and Harkins as set forth at pages 4-7 of
the answer. Appellant argues that the examiner has not met the burden of showing that
the invention as a whole was obvious in light of the prior art. (See brief at page 6.)
Appellant argues further that it was not obvious to simply substitute one thing, such as a
print button, into a web page in place of inserting an Applet without a teaching,
suggestion or motivation to do so. (See brief at page 7.) We agree with appellant.
The examiner maintains that it would have been obvious to one of ordinary skill
in the art to combine the teachings of Cuomo and Harkins since they each are related
to collaborative applications and that such combination would allow each user the
freedom to retrieve information. Appellant argues that this rationale conveniently
ignores the fact that the users in Cuomo already have access to printers and would
have no motivation to alter the original web page. (See brief at pages 7-8.) We agree
with appellant. Appellant also argues that Cuomo teaches the use of a traditional web
browser 205 to display the received data from a web server 206. (See brief at page 8
and Cuomo at col. 1.) Appellant argues that the Web Browser would have had a print
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