Appeal No. 2003-1112
Application No. 09/520,892
distributes a portion of said documents responsive to one or more document processing
applications at said processing location which convert the received documents into one
or more electronic document formats.” (See also brief at page 8.) Appellants argue
that the mere presence of applications in Yamauchi does not mean that Yamauchi
teaches the use of an application server as recited in the language of independent
claim 1. (See brief at page 8.) We agree with appellants. Therefore, we find that the
examiner has not established a prima facie case of anticipation, and we cannot sustain
the rejection of independent claims 1, 36, and 64 which all have similar limitations and
the rejection of their dependent claims.
With respect to independent claim 65, appellants argue that independent claim
65 includes a “means for distributing said one or more documents to said one or more
remote terminals.” Here, we find no response to this argument by the examiner in the
answer. Therefore, we cannot sustain the rejection of independent claim 65.
35 USC § 103
In rejecting claims under 35 U.S.C. § 103, the examiner bears the initial burden
of presenting a prima facie case of obviousness. See In re Rijckaert, 9 F.3d 1531,
1532, 28 USPQ2d 1955, 1956 (Fed. Cir. 1993). A prima facie case of obviousness is
established by presenting evidence that the reference teachings would appear to be
sufficient for one of ordinary skill in the relevant art having the references before him to
make the proposed combination or other modification. See In re Lintner, 458 F.2d
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