Ex Parte SHORTER - Page 4




              Appeal No. 2002-0580                                                                                      
              Application No. 08/980,336                                                                                

                     The examiner maintains that Munroe teaches that it is desirable to be able to                      
              uniquely identify objects across some domain including a network of systems.  (See                        
              answer at page 4.)  While we agree with the examiner that Munroe provides a clear                         
              motivation for the unique identifier, Munroe also provides teachings of various                           
              methodologies to perform this goal, but we find no specific teaching or suggestion of                     
              the use of three identifiers or a suggestion to include a network identifier in addition to               
              two other identifiers.                                                                                    
                     With respect to the examiner’s response to appellant’s argument concerning no                      
              reasonable expectation of success, we find that the examiner is merely speculating as                     
              to  the extension of the unique identifier to include the network identifier.  From the                   
              teachings of Munroe, we do find a motivation for a unique identifier across a network of                  
              systems, but no realization of the use of a network identifier in combination with other                  
              identifiers to make the composite which uniquely identifies the object.  Therefore, we                    
              find that the examiner has not established a prima facie case of obviousness of the                       
              claimed invention, and we cannot sustain the rejection of independent claims 1, 8 and                     
              16 and their respective dependent claims which have similar limitations.                                  









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