Appeal No. 2002-0366 Page 5
Application No. 08/803,692
1572, 1577, 221 USPQ 929, 933 (Fed. Cir. 1984). These showings
by the examiner are an essential part of complying with the
burden of presenting a prima facie case of obviousness. Note In
re Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir.
1992). If that burden is met, the burden then shifts to the
applicant to overcome the prima facie case with argument and/or
evidence. Obviousness is then determined on the basis of the
evidence as a whole. See id.; In re Hedges, 783 F.2d 1038, 1039,
228 USPQ 685, 686 (Fed. Cir. 1986); In re Piasecki, 745 F.2d
1468, 1472, 223 USPQ 785, 788 (Fed. Cir. 1984); and In re
Rinehart, 531 F.2d 1048, 1052, 189 USPQ 143, 147 (CCPA 1976).
We consider first the rejection of claims 5 and 12 based on
the teachings of Tang'365 in view of Tang'173. The examiner's
position (answer, page 5) is that Tang'365 does not discuss the
ability of the user to selectively prevent others from being
informed when they are on-line. To overcome this deficiency in
Tang'365, the examiner turns to Tang'173 for a teaching of being
able to selectively prevent others from being able to identify or
contact an individual based on some criteria.
Appellant asserts (brief, page 10) that claim 5 recites
selectively blocking co-users from adding a user to their
associated user definable co-user lists, based on block
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