Appeal No. 2004-2086 Page 8
Application No. 09/238,800
From all of the above, we find that the examiner has failed
to establish a prima facie case of anticipation of claim 1.
Accordingly, the rejection of claim 1 under 35 U.S.C. § 102(e),
and claims 2, 5, 7 and 28-30, dependent therefrom is reversed.
In addition, as independent claims 10 and 19 also recite
intercepting an incoming communication at the data processing
system, the rejection of independent claims 10 and 19, as well as
claims 11, 13, 14, 16, 18, 20, 22, 23, 25, 27 and 31-35,
dependent therefrom, is reversed.
We turn next to the rejection of claims 8, 17 and 26 under
35 U.S.C. § 103(a) as being unpatentable over Boucher in view of
Lyberg. In rejecting claims under 35 U.S.C. § 103, it is
incumbent upon the examiner to establish a factual basis to
support the legal conclusion of obviousness. See In re Fine, 837
F.2d 1071, 1073, 5 USPQ2d 1596, 1598 (Fed. Cir. 1988). In so
doing, the examiner is expected to make the factual
determinations set forth in Graham v. John Deere Co., 383 U.S. 1,
17, 148 USPQ 459, 467 (1966), and to provide a reason why one
having ordinary skill in the pertinent art would have been led to
modify the prior art or to combine prior art references to arrive
at the claimed invention. Such reason must stem from some
teaching, suggestion or implication in the prior art as a whole
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