Appeal 2007-0458
Application 10/247,533
& Co., Inc. v. Biocraft Labs., Inc., 874 F.2d 804, 807, 10 USPQ2d 1843,
1846 (Fed. Cir. 1989)).
In short, we find ample motivation on this record for the skilled
artisan to have utilized highlighting as suggested by Card in Yagasaki’s
system. As the Examiner indicates, the skilled artisan would have
recognized the benefits of using highlighting including, among other things,
providing more information in response to a query and illustrating the
proportion of items satisfying a query.
For at least these reasons, we will sustain the Examiner’s rejection of
independent claims 1 and 24. Since Appellant has not separately argued the
patentability of dependent claims 2, 3, 6, and 25-28, these claims fall with
independent claims 1 and 24. See In re Nielson, 816 F.2d 1567, 1572, 2
USPQ2d 1525, 1528 (Fed. Cir. 1987); see also 37 C.F.R. § 41.37(c)(1)(vii).
We next consider the Examiner’s rejection of claims 4 and 5 under 35
U.S.C. § 103(a) as unpatentable over Yagasaki in view of Card and further
in view of Brown. We find that the Examiner has established at least a
prima facie case of obviousness of those claims that Appellant has not
persuasively rebutted. Specifically, the Examiner has (1) pointed out the
teachings of Yagasaki and Card, (2) noted the perceived differences between
these references and the claimed invention, and (3) reasonably indicated how
and why the references would have been modified to arrive at the claimed
invention (Answer 10-11). Once the Examiner has satisfied the burden of
presenting a prima facie case of obviousness, the burden then shifts to
Appellant to present evidence or arguments that persuasively rebut the
Examiner's prima facie case. Appellant did not persuasively rebut the
Examiner's prima facie case of obviousness, but merely noted that the
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