Appeal No. 2005-0599
Application 09/734,805
dissimilar are essentially moot because examiner does
not find that CORBA is ever even being called for in
this claim set.
The appellants’ claims require searching using ORB, and
CORBA is an ORB standard.2 Hence, it was improper for the
examiner to dismiss the appellants’ argument as moot.
To establish a prima facie case of anticipation the examiner
must provide evidence or technical reasoning which shows that
Hogan discloses, expressly or inherently, searching using ORB.
See Corning Glass Works v. Sumitomo Elec. U.S.A., Inc., 868 F.2d
1251, 1255-56, 9 USPQ2d 1962, 1965 (Fed. Cir. 1989). The
examiner’s argument that TCP/IP “is readable an [sic, on] ORB
since it is a protocol that permits access to programming objects
through a brokering interface (FIG. 4)” (answer, page 3) does not
provided the required evidence or technical reasoning which shows
that even if both TCP/IP and ORB can be involved in permitting
access to programming objects through a brokering interface, they
serve the same function in permitting that access rather than
functioning at different levels of the OSI model as argued by the
2 See Newton’s Telecom Dictionary 588 (Miller Freeman 1999),
a copy of which is provided to the appellants with this decision.
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