Appeal No. 2004-1324
Application No. 09/495,116
relied upon, the Examiner is expected to make the factual
determination 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. See also In re Rouffet, 149 F.3d 1350,
1355, 47 USPQ2d 1453, 1456 (Fed. Cir. 1998). Such evidence is
required in order to establish a prima facie case. In re
Piasecki, 745 F.2d 1468, 1471-72, 223 USPQ 785, 787-88 (Fed. Cir.
1984). The Examiner must not only identify the elements in the
prior art, but also show “some objective teaching in the prior
art or that knowledge generally available to one of ordinary
skill in the art would lead the individual to combine the
relevant teachings of the references.” In re Fine, 837 F.2d
1071, 1074, 5 USPQ2d 1596, 1598 (Fed. Cir. 1988).
A review of the applied prior art confirms that Alles and
Toader relate to providing free Internet access to users for free
in exchange for presenting sponsor-paid advertising to the users.
The only measure of security in these two references relates to
the login process for identifying the user who has previously
registered (col. 3, lines 13-18 of Alles and col. 4, lines 6-8 of
Toader). As pointed out by Appellant (reply brief, page 5), the
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