Appeal 2007-0471
Application 10/423,307
1 With respect to dependent claim 5, Appellant argues that Gifford “has
2 nothing to do with generating a more direct path based on the manner in
3 which an item is accessed” (Br. 11.). We disagree.
4 Gifford describes generating a more direct path (“the most useful of
5 documents [ ] are listed first” Col. 4, ll. 36-37) based on the manner in which
6 an item is accessed (“ranks and presents the most frequently used
7 Documents” Col. 4, ll. 30-31).
8 Therefore, we will sustain the Examiner’s rejection under
9 35 U.S.C. § 102.
10 II. Whether Appellant has established the Examiner erred in rejecting
11 claims 8, 9, 18, 19, 28, and 29 under 35 U.S.C. § 103.
12 It is our view, after consideration of the record before us, that the
13 evidence relied upon and the level of skill in the particular art would not
14 have suggested to one of ordinary skill in the art the invention as set forth in
15 claims 8, 9, 18, 19, 28, and 29. Accordingly, we reverse.
16 The Supreme Court in Graham v. John Deere, 383 U.S. 1, 17-18, 148
17 USPQ 459, 467 (1966), stated that three factual inquiries underpin any
18 determination of obviousness:
19 Under § 103, the scope and content of the prior art are to be
20 determined; differences between the prior art and the claims at
21 issue are to be ascertained; and the level of ordinary skill in the
22 pertinent art resolved. Against this background, the obviousness
23 or nonobviousness of the subject matter is determined. Such
24 secondary considerations as commercial success, long felt but
25 unsolved needs, failure of others, etc., might be utilized to give
26 light to the circumstances surrounding the origin of the subject
27 matter sought to be patented. As indicia of obviousness or
28 nonobviousness, these inquiries may have relevancy.
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