Appeal No. 2002-1985
Application No. 09/351,208
that Asahioka needs to use “flag retrieval” technique because
merely identifying “subject-predicate-complement” in a string of
words is not enough to solve ambiguities (reply brief, page 2).
In response to Appellant’s arguments, the Examiner relies on
the entire text between col. 3, line 44 and col. 6, line 49 and
merely equates the division of a sentence “into subject,
predicate and complement” with the claimed “predetermined
component classes” (answer, page 10). The Examiner further
argues that the suggested combination does not need the use of
the “retrieval flags” and is merely based on the teachings
related to the use of structural analysis (id.).
As a general proposition, 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) and In re Fine,
837 F.2d 1071, 1074, 5 USPQ2d 1596, 1598 (Fed. Cir. 1988). A
prima facie case of obviousness is established when the teachings
of the prior art itself would appear to have suggested the
claimed subject matter to one of ordinary skill in the art. See
In re Bell, 991 F.2d 781, 783, 26 USPQ2d 1529, 1531 (Fed. Cir.
1993); In re Fritch, 972 F.2d 1260, 1266 n.14, 23 USPQ2d 1780,
1783-84 n.14 (Fed. Cir. 1992); Uniroyal, Inc. v. Rudkin-Wiley
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