Ex Parte Grover et al - Page 7



            Appeal No. 2006-2460                                                        Page 7              
            Application No. 09/966,620                                                                      

            a network and Ylonen is related to installing network devices [answer, page                     

            10].                                                                                            

                   At the outset, we note that to reach a proper conclusion under § 103,                    

            the examiner, as finder of fact, must step backward in time and into the                        

            mind of a person of ordinary skill in the art at a time when the invention was                  

            unknown, and just before it was made.  In light of all the evidence, we                         

            review the specific factual determinations of the examiner to ascertain                         

            whether the examiner has convincingly established that the claimed                              

            invention as a whole would have been obvious at the time of the invention to                    

            a person of ordinary skill in the art.  When claim elements are found in more                   

            than one prior art reference, the fact finder must determine “whether a                         

            person of ordinary skill in the art, possessed with the understandings and                      

            knowledge reflected in the prior art, and motivated by the general problem                      

            facing the inventor, would have been led to make the combination recited in                     

            the claims.” In re Kahn 441 F.3d at 988, 78 USPQ2d at 1337.  With respect                       

            to the role of the examiner as finder of fact, the Court of Appeals for the                     

            Federal Circuit has stated: “the examiner bears the initial burden, on review                   

            of the prior art or on any other ground, of presenting a prima facie case of                    

            unpatentability.” In re Oetiker,  977 F.2d at 1445, 24 USPQ2d at 1444.                          

                   In the instant case, we note that the examiner acknowledges that                         

            Philippou fails to teach “turning-off a feature to configure the first device                   







Page:  Previous  1  2  3  4  5  6  7  8  9  10  11  12  Next 

Last modified: November 3, 2007