Appeal No. 2003-0355
Application No. 09/217,725
Additionally, Appellants argue that the recited first and second
versions of the item name are indeed functionally involved in the
recited steps such that the customer’s search for an item name is
facilitated (brief, page 17).
In response to Appellants’ arguments, the Examiner asserts
that Humble provides the motivation by indicating that many
hierarchies of groups and classes, such as alphabetical listings,
will facilitate customer selection (answer, page 8).
Additionally, the Examiner further points out that the claimed
displaying of item names appears to be only nonfunctional
descriptive material without exhibiting any functional
interrelationship with the computing process (answer, page 9).
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). To reach a conclusion of
obviousness under § 103, the examiner must produce a factual
basis supported by teaching in a prior art reference or shown to
be common knowledge of unquestionable demonstration. Such
evidence is required in order to establish a prima facie case.
In re Piasecki, 745 F.2d 1468, 1471-72, 223 USPQ 785, 787-88
(Fed. Cir. 1984). The Examiner must not only identify the
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