Appeal No. 2002-0056
Application No. 08/868,201
The rejection attempts to combine Nielsen, a reference which describes tags to relate
HTML documents viewed by a browser, with Winter, a reference which describes a
word processor for creating HTML documents . . . . As such, Appellant submits that
the Official Action fails to make a prima facie case of obviousness as it has failed to
provide a reasonable justification apparent from the art of record for combining the
references. The proposed modification of Nielsen in view of Winter is merely the
result of the impermissible use of hindsight in light of the teachings of the present
invention. As such, there is no apparent motivation to combine the references to
provide such an interaction and there is no indication of how the references could be
combined to result in such an interaction.
We agree with appellant’s arguments. The record before us does not support any of the
reasons expressed by the examiner for combining the teachings of the references. The factual
question of motivation should be resolved based on evidence of record, and not on the subjective
belief and unknown authority expressed by the examiner. In re Lee, 277 F.3d 1338, 1343-44, 61
USPQ2d 1430, 1434 (Fed. Cir. 2002). Thus, the obviousness rejection of claims 1, 4 through 6, 8,
10, 12, 13, 16, 22, 24 and 26 is reversed because the examiner has not made a prima facie showing
of obviousness.
The obviousness rejection of claims 2, 3, 7, 9, 11, 19, 23, 25 and 27 is likewise reversed
because the teachings of Cordell, Freivald, Goldman and Lemay fail to cure the noted shortcomings
in the teachings of Nielsen and Winter.
DECISION
5
Page: Previous 1 2 3 4 5 6 7 Next
Last modified: November 3, 2007