Appeal No. 2004-0171 Page 8
Application No. 09/239,295
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 Ball,
Berenice, or Spyglass cures the aforementioned deficiency of Brown. Absent a
teaching or suggestion 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, we are unpersuaded of a prima facie case of
obviousness. Therefore, we reverse the obviousness rejections of claims 4-10, 17, 20,
47-50, 57, 59, 60, and 63-70.
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