Appeal No. 2006-1790
Application No. 10/042,030
art. In re Kahn, __ F.3d__, 78 USPQ2d 1329, 1336 (Fed. Cir. 2006) citing In re Kotzab,
217 F.3d 1365, 1370, 55 USPQ2d 1313 (Fed. Cir. 2000). See also In re Thrift, 298 F.3d
1357, 1363, 63 USPQ2d 2002, 2008 (Fed. Cir. 2002). These showings by the examiner
are an essential part of complying with the burden of presenting a prima facie case of
obviousness. Note In re Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444 (Fed.
Cir. 1992). If that burden is met, the burden then shifts to the applicant to overcome the
prima facie case with argument and/or evidence. Obviousness is then determined on
the basis of the evidence as a whole and the relative persuasiveness of the arguments.
See Id.; In re Hedges, 783 F.2d 1038, 1040, 228 USPQ 685, 687 (Fed. Cir. 1986); In re
Piasecki, 745 F.2d 1468, 1472, 223 USPQ 785, 788 (Fed. Cir. 1984); and In re
Rinehart, 531 F.2d 1048, 1051, 189 USPQ 143, 146-147 (CCPA 1976). Only those
arguments actually made by appellant have been considered in this decision.
Arguments which appellant could have made but chose not to make in the brief have
not been considered and are deemed to be waived [see 37 CFR §41.37(c)(1)(vii)
(2004)].
Focusing on claim 1, the examiner asserts that page 2 (page 1?), lines 13-17, of
the instant specification describes a conventional system wherein the clarification of a
document is admitted as being well known, and that lines 22-25, on that page of the
instant specification, describe the conventional retrieval of a document by a browser.
Moreover, the examiner points to page 1, lines 17-21, of the instant specification as
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