Appeal 2006-2937
Application 09/840,188
our review of the rejected claims and in light to the Examiner’s brief
analysis and statement of the rejection in the Answer, we find that the
Examiner has not established a prima facie case of non-statutory subject
matter. We find that the Examiner has not shown that the database
management system as recited in independent claims 48 and 86 are not
machines that perform a “useful, concrete and tangible result” of managing
access to the data in the database. Therefore, we find that the database
management system of independent claims 48 and 86 is eligible to be
patented under 35 U.S.C. § 101. Therefore, we cannot sustain the rejection
under 35 U.S.C. § 101.
35 U.S.C. § 103
In rejecting claims under 35 U.S.C. § 103, the examiner bears the
initial burden of presenting a prima facie case of obviousness. See In re
Rijckaert, 9 F.3d 1531, 1532, 28 USPQ2d 1955, 1956 (Fed. Cir. 1993). A
prima facie case of obviousness is established by presenting evidence that
the reference teachings would appear to be sufficient for one of ordinary
skill in the relevant art having the references before him to make the
proposed combination or other modification. See In re Lintner, 458 F.2d
1013, 1016, 173 USPQ 560, 562 (CCPA 1972). Furthermore, the
conclusion that the claimed subject matter is prima facie obvious must be
supported by evidence, as shown by some objective teaching in the prior art
or by knowledge generally available to one of ordinary skill in the art that
would have led that individual to combine the relevant teachings of the
references to arrive at the claimed invention. See In re Fine, 837 F.2d 1071,
1074, 5 USPQ2d 1596, 1598 (Fed. Cir. 1988). Rejections based on § 103
6
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 Next
Last modified: September 9, 2013