Appeal No. 2003-0006
Application No. 09/099,546
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).
With respect to the 35 U.S.C. § 103(a) rejection of the
appealed independent claims 1 and 7-10, Appellant’s arguments in
response (Brief, pages 20 and 21) assert a failure by the Examiner
to set forth a prima facie case of obviousness since proper
motivation for the proposed combination of Ness and Goodwin has not
been established. After reviewing the applied Ness and Goodwin
references in light of the arguments of record, we are in general
agreement with Appellant’s position as stated in the Brief.
In our view, the Examiner has combined the electronic price
labeling features of Goodwin with the pager locating system of Ness
in some vague manner without specifically describing how the
teachings would be combined, nor how any such combination would
satisfy the requirements of appealed independent claims 1 and 7-10.
This does not persuade us that one of ordinary skill in the art
having the references before her or him, and using her or his own
knowledge of the art, would have been put in possession of the
claimed subject matter. The mere fact that the prior art may be
modified in the manner suggested by the Examiner does not make the
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