Appeal No. 2002-2013
Application 09/036,699
proxy server or any one of servers, storage, repositories, communication links in
the internet environment because the use of proxy servers are old and well known
in the art. In addition, sending URLs to a different destination is not a patentable
distinction, and it is only a design choice.
The above-quoted rationale is unpersuasive. Most of the examiner’s assertions are
merely conclusory and without supporting evidence, e.g., the statement that sending URLs to a
different (meaning remote in this context) destination is not a patentable distinction and is only a
design choice. The examiner has not cited to any prior art which makes use of a remote server or
remote platform as the destination for a pre-fetch operation for URLs. Even assuming that
remote servers or remote platforms exist on the internet, that alone does not mean all uses or
applications involving remote servers and platforms are without patentable distinction. It is
incumbent upon the examiner to produce evidence to support an obviousness conclusion and not
simply declare the claimed invention obvious.
The mere fact that the prior art may be modified in the manner suggested by the examiner
does not make the modification obvious unless the prior art suggested the desirability of the
modification. In re Fritch, 972 F.2d 1260, 1266, 23 USPQ2d 1780, 1783-84 (Fed. Cir. 1992). It
is impermissible to use the claimed invention as an instruction manual or "template" to piece
together the teachings of the prior art so that the claimed invention is rendered obvious. Id.
We also do not find that the examiner either has taken official notice or can take such
official notice that it is common knowledge to pre-fetch URLs to a remote platform or a remote
server. The matter is clearly in dispute. Ultimately, and in any event, it is still up to the
examiner to produce evidence sufficient to make out a prima facie case of obviousness. The
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