Appeal No. 2006-2702 Page 10
Application No. 09/881,234
appellants’ claimed invention “wherein data elements are sent alternately from
query and subject data elements.”
As we understand Smith, the reference teaches that “query” data
elements are sent to a remote processor that already contains the “subject” data
elements, e.g. a sequence database. See e.g., Smith, page 454, wherein Smith
states that Internet “services are extremely useful for molecular biologists, as
they allow access to the ever-expanding sequence data bases without requiring
copious local data base storage. . . .” The examiner fails to identify, and we do
not find, a teaching in Smith to suggest that “data elements are sent alternately
from query and subject data elements.” We remind the examiner that “[a]ll words
in a claim must be considered in judging the patentability of that claim against the
prior art.” In re Wilson, 424 F.2d 1382, 1385, 165 USPQ 494, 496 (CCPA 1970).
In rejecting claims under 35 U.S.C. § 103, the examiner bears the initial
burden of presenting a prima facie case of obviousness. In re Oetiker, 977 F.2d
1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir. 1992). For the foregoing
reasons, it is our opinion that the examiner fails to provide the evidence
necessary to establish a prima facie case of obviousness. If the examiner fails to
establish a prima facie case, the rejection is improper and will be overturned. In
re Fine, 837 F.2d 1071, 1074, 5 USPQ2d 1596, 1598 (Fed. Cir. 1988).
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