Appeal No. 2004-0214 Page 10
Application No. 09/446,516
For the reasons set forth above, the decision of the examiner to reject claims 1 to
12, 15 to 17, 20 to 32, 34 and 35 under 35 U.S.C. § 102(b) is reversed
In rejecting claims under 35 U.S.C. § 103, the examiner bears the initial burden
of presenting a case of obviousness. See In re Rijckaert, 9 F.3d 1531, 1532, 28
USPQ2d 1955, 1956 (Fed. Cir. 1993). A case of obviousness is established by
presenting evidence that the reference teachings would appear to be sufficient for one
of ordinary skill in the relevant art having the references before him to make the
proposed combination or other modification. See In re Lintner, 458 F.2d 1013, 1016,
173 USPQ 560, 562 (CCPA 1972). Even when obviousness is based on a single prior
art reference, there must be a showing of a suggestion or motivation to modify the
teachings of that reference. See In re Kotzab, 217 F.3d 1365, 1370, 55 USPQ2d 1313,
1316-17 (Fed. Cir. 2000).
With regard to the rejection of claims 1 to 12, 15 to 17, 20 to 32, 34 and 35 under
35 U.S.C. § 103, we note that the examiner has not presented any evidence suggesting
modifying Deaton to have a CRITERIA file as claimed which is distinct from a
COUPON-TYPE file as claimed. In fact, the examiner never even alleged that such
would have been obvious at the time the invention was made to a person of ordinary
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