Appeal No. 2004-1828
Application No. 09/094,949
invention in view of the prior art 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). 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). 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).
Appellants argue that Kohda obtains information for
selecting advertisements from users by negotiating with users,
who agree to see specific categories of advertisements while
browsing (brief, page 5). Appellants further point out that in
Kohda, the advertisements are chosen based on information
obtained from the filters stored on the user’s augmented Web
browser and according to the user’s specified categories of
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