Appeal No. 2004-0171 Page 7
Application No. 09/239,295
Here, Brown "determin[es] the information contents of document portions and
replac[es] undesired document portions with substitute document portions. . . ." Col. 1,
ll. 9-12. Such portions "conform to the widely accepted and well-known hyper-text
mark-up language (HTML)." Col. 6, ll. 51-52. The examiner has not shown, however,
that the reference inputs characteristics of a device on which the portions are to be
displayed. Nor has he shown that such a device features a display smaller than that of
a desktop-sized monitor. To the contrary, rather than displaying documents on a PDA
or a cell-phone, Brown displays documents on "a computer, a television set, or any
other suitable end terminal with a display screen." Col. 4, ll. 15-16.
The absence of inputting characteristics of a device (e.g., PDA, cell-phone)
having a display smaller than that of a desktop-sized monitor and applying a series of
transforms to a document (e.g., a document written in HTML) designed to be displayed
on such a monitor so that the document can be accurately displayed on the device's
smaller display negates anticipation. Therefore, we reverse the anticipation rejection of
claim 1; of claims 2, 11, 18, 19, 24, 25, and 51, which depend therefrom; of claim 58;
and of clams 61 and 62, which depend therefrom.
"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,
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