Appeal No. 2001-1007
Application No. 08/937,025
characteristics of the claimed invention. See In re Thorpe, 777 F.2d 695, 698, 227
USPQ 964, 966 (Fed. Cir. 1985); In re King, 801 F.2d 1324, 1327, 231 USPQ 136, 138
(Fed. Cir. 1986). Hence, appellants’ burden before the PTO is to prove that the applied
prior art reference does not perform the functions defined in the claims. Compare In re
Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433-34 (CCPA 1977); In re Ludtke, 441
F.2d 660, 664, 169 USPQ 563, 566-67 (CCPA 1971). Here, we find that appellants
have met this burden, and we will not sustain the rejection of claim 1.
Appellants argue that the claimed invention is directed to accessing an existing
database and Peters is concerned with building a database. (See brief at page 13.)
We agree with appellants’ argument at pages 15-16 of the brief that the cited passages
in Peters do not remotely correspond to the language of independent claim 1. While
the examiner maintains that the cited portions teach the claimed invention at pages 4-5
and 6-7 of the answer, the examiner never addresses the distinction between forming a
database in Peters from the email responses for later use and accessing and the
language of independent claim 1 which clearly accesses an already existing database
and provides an indication of confidence in the result in one or more result caveats from
the accessing. Since the examiner has not provided a reasoned analysis of the
disclosure of Peters that at least facially addressed the limitations of independent claim
1, we will not sustain the rejection of independent claim 1.
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