Appeal 2007-0723
Application 10/310,527
In rejecting claims under 35 U.S.C. § 103, it is incumbent upon the
Examiner to establish a factual basis to support the legal conclusion of
obviousness. See In re Fine, 837 F.2d 1071, 1073, 5 USPQ2d 1596, 1598
(Fed. Cir. 1988). In so doing, the Examiner must make the factual
determinations set forth in Graham v. John Deere Co., 383 U.S. 1, 17, 148
USPQ 459, 467 (1996). “[T]he Examiner bears the initial burden on review
of the prior art or on any other ground, of presenting a prima facie case of
unpatentability.” In re Oetiker, 977 F.3d 1443, 1445, 24 USPQ 1443, 1444
(Fed. Cir. 1992). Furthermore, “‘there must be some articulated reasoning
with some rational underpinning to support the legal conclusion of
obviousness’ . . . . [H]owever, the analysis need not seek out precise
teachings directed to the specific subject matter of the challenged claim, for
a court can take account of the inferences and creative steps that a person of
ordinary skill in the art would employ.” KSR Int’l Co. v. Teleflex Inc., 127 S.
Ct. 1727, 82 USPQ2d 1385, 1396 (2007) (quoting In re Kahn, 441 F.3d 977,
988, 78 USPQ2d 1329, 1336 (Fed. Cir. 2006)).
As a starting point for our analysis, we make reference to the admitted
prior art at Specification page 1, paragraph [002]. There it is made clear to
the reader that it was known in the art that image files were organized into
folders on a PC by users. This notion is expanded upon at Specification
pages 4 and 5, paragraphs [014-016] and the showing in figure 2. Sources of
image files were said to be digital cameras (such as the camera of
Anderson). It is emphasized in paragraph [014] that files generally were
stored on a computer in a hierarchical manner where the route for the
various images in the folder hierarchy was characterized as a path. Software
3
Page: Previous 1 2 3 4 5 6 7 8 Next
Last modified: September 9, 2013