Appeal No. 2003-0182 Page 6
Application No. 09/532,579
would have been an obvious matter of engineering choice to
store the profile at the mobile device instead of at the remote
information device, merely depending on whether the
advantage of allowing easier updating of a profile at a
mobile device was considered more desirable than not
having to transmit the profile to a remote information device
continuously, such as is the case in Rosen, both techniques
providing the equivalent function of sending profile related
information from a remote site to a mobile user, appellant
citing no criticality for use of one technique versus the
equivalent technique.
We note, as does appellant on page 2 of the reply brief, that the examiner provides no
factual support for this position. Rejections based on 35 U.S.C. § 103 must rest on a
factual basis. In making such a rejection, the examiner has the initial duty of supplying
the requisite factual basis and may not, because of doubts that the invention is
patentable, resort to speculation, unfounded assumptions or hindsight reconstruction to
supply deficiencies in the factual basis. In re Warner, 379 F.2d 1011, 1017, 154 USPQ
173, 178 (CCPA 1967), cert. denied, 389 U.S. 1057 (1968).
As for the examiner’s characterization of the storage of the user profile on the
mobile device and storage of the user profile on the remote information system as
functional equivalents, we note the following. First, the examiner has not proffered any
evidence establishing that these two arrangements are, or would have been recognized
as, functional equivalents. Second, expedients which are functionally equivalent to
each other are not necessarily obvious in view of one another. In re Scott, 323 F.2d
1016, 1019, 139 USPQ 297, 299 (CCPA 1963).
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