Appeal No. 2005-0473
Application No. 09/514,946
necessarily weigh all of the evidence and argument.” In re
Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir.
1992). In this case, taking the web site that displays an ad as
a “subscriber” and taking displaying an ad for goods as the goods
offered by a subscriber (answer, page 5), as discussed by
Appellant (reply brief, pages 5 & 6), would result in improper
construction of the claimed language.
Rejections based on § 103 must also rest on a factual basis
with these facts being interpreted without hindsight
reconstruction of the invention from the prior art. The examiner
may not, because of doubt that the invention is patentable,
resort to speculation, unfounded assumption or hindsight
reconstruction to supply deficiencies in the factual basis for
the rejection. See In re Warner, 379 F.2d 1011, 1017, 154 USPQ
173, 178 (CCPA 1967). In concluding that the bidding for the
advertisement displayed to a user in Roth is even relevant to
Gardenswartz’s tracked activities using cookies, without
providing any reasonable factual evidence, the Examiner attempts
to forge a combination of entirely different advertising
approaches.
In view of our analysis above, we find that the Examiner has
failed to set forth a prima facie case of obviousness because the
8
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 Next
Last modified: November 3, 2007