Appeal No. 2006-1617
Application No. 09/812,202
Claims 1-4 stand rejected under 35 U.S.C. § 103 as being obvious over
Anderson.
Throughout our opinion, we make references to the Appellants’ briefs, and to the
Examiner’s Answer for the respective details thereof.1
OPINION
With full consideration being given to the subject matter on appeal, the
Examiner’s rejections and the arguments of the Appellants and the Examiner, for the
reasons stated infra, we reverse the Examiner’s rejection of claim 2 under
35 U.S.C. § 101; and we reverse the Examiner’s rejection of claims 1-4 under
35 U.S.C. § 103.
I. Whether the Rejection of Claim 2 Under 35 U.S.C. § 101 is proper?
With respect to independent claim 2, Appellants argue at page 10 of the brief,
that the Examiner has erred in that there has been no showing that claim 2 is merely
limited to software per se. We agree.
The rejection before us merely states that “the claimed invention is considered
software per se in light of the specification (pages 9-10).” See the Examiner’s answer at
page 3. The Examiner bears the initial burden of establishing a prima facie case.
Without some explanation of Examiner’s reasoning with respect to pages 9-10 of
Appellants’ specification, we find that a prima facie case has not been established.
Therefore, we will not sustain the Examiner’s rejection under 35 U.S.C. § 101.
1 Appellants filed an appeal brief on June 21, 2005. Appellants filed a reply brief on Jan.
30, 2006. The Examiner mailed an Examiner’s Answer on Nov. 28, 2005.
3
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