Appeal No. 2006-2216
Application No. 09/741,038
Therefore, what the Examiner characterizes as the claimed
different categories of information, is actually absent in the
combination of Gusack and Douglas since the tabs represent only
the category of section heads. We also observe that although
other categories of information, such as the title or the volume
information, may be represented on one of the binding edges of
the virtual journal of Gusack, the Examiner has not provided any
supportive evidence thereof. Thus, even assuming, arguendo, that
it would have been obvious to combine Douglas with Gusack, the
Examiner has not shown how the claimed arrangement of information
may be represented on the one or more side edges of the virtual
book. A rejection based on section 103 must rest upon a factual
basis rather than conjecture, or speculation. “Where the legal
conclusion [of obviousness] is not supported by the facts it
cannot stand.” In re Warner, 379 F.2d 1011, 1017, 154 USPQ 173,
178 (CCPA 1967). See also In re Lee, 277 F.3d 1338, 1344, 61
USPQ2d 1430, 1434 (Fed. Cir. 2002) and In re Kahn, 441 F.3d 977,
988, 78 USPQ2d 1329, 1336 (Fed. Cir. 2006).
Independent claims 16 and 31-33 also include similar
limitations that, based on the evidence of record and as
discussed above with respect to claim 1, would have not been
obvious to one of ordinary skill in the art. Accordingly, as the
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