Appeal No. 2003-0048 Page 5
Application No. 09/163,787
retrieve from the list data specifying whether a peripheral performs an additional
function, and examine the retrieved data to identify peripherals performing the additional
function.
2. OBVIOUSNESS DETERMINATION
Having determined what subject matter is being claimed, the next inquiry is
whether the subject matter would have been obvious. "In rejecting claims under 35
U.S.C. Section 103, the examiner bears the initial burden of presenting a prima facie
case of obviousness." In re Rijckaert, 9 F.3d 1531, 1532, 28 USPQ2d 1955, 1956 (Fed.
Cir. 1993) (citing In re Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir.
1992)). "'A prima facie case of obviousness is established when the teachings from the
prior art itself would . . . have suggested the claimed subject matter to a person of
ordinary skill in the art.'" In re Bell, 991 F.2d 781, 783, 26 USPQ2d 1529, 1531 (Fed.
Cir. 1993) (quoting In re Rinehart, 531 F.2d 1048, 1051, 189 USPQ 143, 147 (CCPA
1976)).
Here, the examiner has not shown that the combination of Butts and Uda would
have suggested that a client retrieve, from a list of servers connected to peripherals
performing a basic function, data specifying whether a peripheral performs an additional
function or that the client examine the retrieved data to identify peripherals performing
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