Appeal No. 2006-2354 Page 4
Application No. 09/877,157
the examiner bears the initial burden of establishing a prima facie case of
obviousness. In re Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444 (Fed.
Cir. 1992). See also In re Piasecki, 745 F.2d 1468, 1472, 223 USPQ 785, 788
(Fed. Cir. 1984). The examiner can satisfy this burden by showing that some
objective teaching in the prior art or knowledge generally available to one of
ordinary skill in the art suggests the claimed subject matter. In re Fine, 837 F.2d
1071, 1074, 5 USPQ2d 1596, 1598 (Fed. Cir. 1988). Only if this initial burden is
met does the burden of coming forward with evidence or argument shift to the
appellant. Oetiker, 977 F.2d at 1445, 24 USPQ2d at 1444. See also Piasecki, 745
F.2d at 1472, 223 USPQ at 788.
In the rejection of independent claim 1, the examiner determined that
Moriconi discloses a method for creating a privacy policy as claimed except that it
does not explicitly disclose creating a policy group. The examiner relies on
Abraham for the teaching of creating a policy group. The examiner found that it
would have been obvious to one having ordinary skill in the art at the time the
invention was made to combine the method and apparatus of Moriconi with the
method and apparatus of Abraham in order to secure management of a computer
network. Answer, p. 3.
The appellants contend that the examiner has failed to meet his initial burden
of presenting a prima facie case of obviousness. Brief, p. 11 (citing In re Oetiker,
977 F.2d at 1445, 24 USPQ2d at 1444). Specifically, the appellants argue that
neither Moriconi nor Abraham teach or suggest any type of privacy policy, or the
creation of a privacy policy. Brief, pp. 11-12. The appellants contend that
Moriconi is directed to ensuring that clients are authorized to access securable
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