Appeal No. 2006-2723
Application No. 09/891,264
Montefiore Hosp., 732 F.2d 1572, 1577, 221 USPQ 929, 933 (Fed. Cir. 1984).
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. See id.; In re Hedges, 783 F.2d 1038, 1039, 228 USPQ 685,
686 (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, 147
(CCPA 1976).
Turning to claim 1, we find from our review of the record that the teachings
of Yates and Beck would have suggested to an artisan, for the reasons advanced by
the Examiner and amplified by our comments, infra, the invention recited in
claim 1.
The Examiner’s position is that Yates discloses the claimed service
computer as a terminal agent (answer, page 14) that executes the claimed service
machine such as the “code” and “SIBB” (answer, pages. 15 and 18). The
Examiner also argues that Yates discloses the claimed network lock as the
5
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 Next
Last modified: November 3, 2007