Appeal 2007-0786
Application 10/262,142
Graham v. John Deere Co., 383 U.S. 1, 17-18, 148 USPQ 459, 467 (1966). See
also KSR, 127 S.Ct. at 1734, 82 USPQ2d at 1391 (“While the sequence of these
questions might be reordered in any particular case, the [Graham] factors continue
to define the inquiry that controls”).
In rejecting claims under 35 U.S.C. § 103(a), the examiner bears the initial
burden of establishing a prima facie case of obviousness. In re Oetiker, 977 F.2d
1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir. 1992). See also In re Piasecki, 745
F.2d 1468, 1472, 223 USPQ 785, 788 (Fed. Cir. 1984). Only if this initial burden
is met does the burden of coming forward with evidence or argument shift to the
appellant. Id. at 1445, 24 USPQ2d at 1444. See also Piasecki, 745 F.2d at 1472,
223 USPQ at 788. Obviousness is then determined on the basis of the evidence as
a whole and the relative persuasiveness of the arguments. See Oetiker, 977 F.2d at
1445, 24 USPQ2d at 1444; Piasecki, 745 F.2d at 1472, 223 USPQ at 788.
ANALYSIS
A. Rejection of claims 1-5, 7-10, 12, 13, and 16-19 under 35 U.S.C. § 102(b)
as anticipated by Cesta.
Appellants argue that Cesta does not show or suggest a processor function
embedded with a resource or negotiation with such a resource (Br. 10). Appellants
correctly point out that the resource agent of Cesta is described as shared by a
community of users (Br.10, Finding of Fact 2). The Examiner found that "[i]n
light of the examples provided in Appellant's [sic, Appellants’] own specification,
the Examiner has interpreted the embedded processor function as being
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