Appeal 2007-0471
Application 10/423,307
1 In rejecting claims under 35 U.S.C. § 103, the Examiner bears the initial
2 burden of establishing a prima facie case of obviousness. In re Oetiker, 977
3 F.2d 1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir. 1992). See also In re
4 Piasecki, 745 F.2d 1468, 1472, 223 USPQ 785, 788 (Fed. Cir. 1984). The
5 Examiner can satisfy this burden by showing some articulated reasoning
6 with some rational underpinning to support the legal conclusion of
7 obviousness. KSR Int’l. v. Teleflex Inc., No. 04-1350, 2007 WL 1237837 at
8 13, 82 U.S.P.Q.2d 1385, 1396 (Apr. 30, 2007) (citing In re Kahn, 441 F.3d
9 977, 988, 78 USPQ2d 1329 (Fed. Cir. 2006)). Only if this initial burden is
10 met does the burden of coming forward with evidence or argument shift to
11 the Appellants. Oetiker, 977 F.2d at 1445, 24 USPQ2d at 1444. See also
12 Piasecki, 745 F.2d at 1472, 223 USPQ at 788.
13 An obviousness analysis commences with a review and consideration
14 of all the pertinent evidence and arguments. “In reviewing the [E]xaminer’s
15 decision on appeal, the Board must necessarily weigh all of the evidence and
16 argument.” Oetiker, 977 F.2d at 1445, 24 USPQ2d at 1444. “[T]he Board
17 must not only assure that the requisite findings are made, based on evidence
18 of record, but must also explain the reasoning by which the findings are
19 deemed to support the agency’s conclusion.” In re Lee, 277 F.3d 1338,
20 1344, 61 USPQ2d 1430, 1434 (Fed. Cir. 2002).
21 With respect to dependent claims 8, 9, 18, 19, 28, and 29, Appellant
22 argues Clifton-Bligh “teaches nothing about generating different paths to an
23 item based on the number of interfaces that must be used” (Br. 11) and “does
24 not change the way an item is accessed” (Br. 12). We agree.
25 We recognize that the Examiner relies on Gifford to teach generating
26 different paths to an item based on the number uses, and Gifford does
5
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