Appeal No. 2003-0549 Page 8
Application No. 09/149,408
information contents of the page corresponding to the screen image is modified such
that a printed representation of the page information is rotated." Col. 8, ll. 15-17.
The absence of reformatting a copy an electronic document without altering the
original electronic document negates anticipation. Therefore, we reverse the
anticipation rejection of claims 1 and 5.
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 does not allege, let alone show, that the addition of Barber,
Sands, or Kashiwagi cures the aforementioned deficiency of Coleman. Absent a
teaching or suggestion of reformatting a copy an electronic document without altering
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