Appeal No. 2006-0553
Application No. 09/444,121
Appellants contend that the claim limitation, “wherein if a
first web page of the plurality appears more than once among the
plurality, said first web page is only printed once” is not
suggested by any of the applied references. While recognizing
the examiner’s position that Hoffert allegedly teaches this
claimed feature, appellants contend that Hoffert is not properly
combinable with Brobst and Dubbels. In particular, it is
appellants’ position that Brobst and Dubbels teach away from a
combination with Hoffert and that Hoffert’s hash table serves a
different purpose than appellants’ hash table, so that Hoffert
would need to be modified to reach the instant claimed subject
matter but there is no suggestion for any such modification.
We agree with appellants and will not sustain the rejection
of claims 2-35 under 35 U.S.C. §103 because, in our view, the
examiner has not established a prima facie case of obviousness.
Assuming all that the examiner has alleged regarding the
combination of Brobst and Dubbels to be true, the examiner admits
that this combination does not provide for the limitation of
“wherein if a first web page of the plurality appears more than
once among the plurality, said first web page is only printed
once,” a limitation appearing in all of the instant claims, in
one form or another.
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