Appeal No. 2004-1952
Application No. 09/207,954
OPINION
In rejecting claims under 35 U.S.C. § 103, the examiner
bears the initial burden of presenting a prima facie case of
obviousness. See In re Rijckaert, 9 F.3d 1531, 1532, 28 USPQ2d
1955, 1956 (Fed. Cir. 1993). To reach a conclusion of
obviousness under Section 103, the examiner must produce a
factual basis supported by a teaching in a prior art reference or
shown to be common knowledge of unquestionable demonstration.
Our reviewing court requires this evidence 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 may satisfy
his/her burden only by showing 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).
In applying Mendler to independent claim 35, the examiner
contends that Mendler teaches receiving a telephone call from a
caller at a server, i.e., the customer calls MCI and provides the
numbers of his/her closest friends; querying the caller by the
server for a third-party telephone number; and receiving the
third-party telephone number (i.e, the system receives the third
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