Appeal No. 2007-0395 Page 7
Application No. 09/789,678
1 Walker [ ] to include the return, as taught by Rogers, in order to provide
2 customer satisfaction (Rogers, lines 16-17).” (Answer, p. 6).
3 17. Appellant contends that the examiner has not established a prima facie
4 case of obviousness over the prior art because (a) the prior art fails to teach
5 or suggest every limitation of the claims and (b) Walker teaches away from
6 the claimed invention and thus one of ordinary skill could arrive at the
7 claimed invention from the prior art only by using impermissible hindsight.
8 (Brief, pp. 9-16).
9 18. Appellant also contends that there is a lack of motivation/suggestion
10 to combine Walker and Rogers and arrive at the claimed invention because
11 Walker and Rogers are concerned with solving different problems as well as
12 problems different than those addressed by the subject invention. Brief, pp.
13 9-11. According to appellant, Walker “addresses the problem of
14 manufacturers and retailers competing for the same customers and the
15 manufacturers not being able to sell their products at discounted prices
16 without alienating the retailers” (Brief, p. 10) and Rogers “addresses the
17 problem of fraud perpetrated on the retailers by unscrupulous customers.”
18 (Brief, p. 10).
19
20 PRINCIPLES OF LAW
21
22 1. A prima facie case of obviousness is established by presenting
23 evidence that would have led one of ordinary skill in the art to combine the
24 relevant teachings of the references to arrive at the claimed invention. See In
25 re Fine, 837 F.2d 1071, 1074, 5 USPQ2d 1596, 1598 (Fed. Cir. 1988) and In
26 re Lintner, 458 F.2d 1013, 1016, 173 USPQ 560, 562 (CCPA 1972).
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