Appeal No. 2003-1025
Application No. 09/224,918
Fine, 837 F.2d 1071, 1074, 5 USPQ2d 1596, 1598 (Fed. Cir. 1988).
Only if this initial burden is met does the burden of coming
forward with evidence or argument shift to the Appellants.
Oetiker, 977 F.2d at 1445, 24 USPQ2d at 1444. See also Piasecki,
745 F.2d at 1472, 223 USPQ at 788.
An obviousness analysis commences with a review and
consideration of all the pertinent evidence and arguments. "In
reviewing the [E]xaminer's decision on appeal, the Board must
necessarily weigh all of the evidence and argument." Oetiker,
977 F.2d at 1445, 24 USPQ2d at 1444. "[T]he Board must not only
assure that the requisite findings are made, based on evidence of
record, but must also explain the reasoning by which the findings
are deemed to support the agency's conclusion." In re Lee,
277 F.3d 1338, 1344, 61 USPQ2d 1430, 1434 (Fed. Cir. 2002).
With respect to independent claim 1, the Examiner states at
page 6 of the answer that, "[f]or purposes of the [art] rejection
of these claims, Examiner has interpreted the claims as including
two separate [processes]." During our discussion of the
rejection under 35 U.S.C. § 112, ¶ 1 above at Section I, we found
that the disclosure as originally filed contains nothing directed
to performing the three sub-steps at lines 8-11 of claim 1 when
the given time is receipt of an indication from a user. (This is
the claimed invention). Rather, the disclosure as originally
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