Appeal No. 2006-1618
Application No. 10/046,797
direction divergent from the path that was taken by the applicant.” In re Kahn,
441 F.3d at 990, 78 USPQ2d at 1338 (Fed. Cir. 2006) (quoting In re Gurley, 27
F.3d 551, 553, 31 USPQ2d 1130, 1131 (Fed. Cir. 1994)). Nothing in Catros can
be reasonably considered to discourage the skilled artisan from enabling the user
to interactively define the search space area as taught in Luo in the cited
combination or to lead the skilled artisan in a direction divergent from the path
taken by the appellant. At the very least, interactively determining the search
space area would provide at least some degree of flexibility in defining the search
space in Catros. In our view, combining the teachings of Luo with Catros and
Makram-Ebeid is reasonable. The examiner's rejection of claim 24 is therefore
sustained.
Lastly, we consider the examiner's rejection of claims 11 and 19 under
35 U.S.C. § 103(a) as being unpatentable over Kim in view of Suzuki and further
in view of Kim ('337). We find that the examiner has established at least a prima
facie case of obviousness of those claims that appellant has not persuasively
rebutted. Specifically, the examiner has (1) pointed out the teachings of Kim, (2)
pointed out the perceived differences between Kim and the claimed invention,
and (3) reasonably indicated how and why Kim would have been modified to
arrive at the claimed invention [non-final rejection, pages 15 and 16]. Once the
examiner satisfied the burden of presenting a prima facie case of obviousness,
the burden then shifted to appellant to present evidence or arguments that
persuasively rebut the examiner's prima facie case. Here, appellant did not
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