Appeal 2007-0926
Application 09/818,303
(Fed. Cir. 1992). Two separate tests define the scope of analogous prior art:
(1) whether the art is from the same field of endeavor, regardless of the
problem addressed and, (2) if the reference is not within the field of the
inventor's endeavor, whether the reference still is reasonably pertinent to the
particular problem with which the inventor is involved. In re Deminski, 796
F.2d 436, 442, 230 USPQ 313, 315 (Fed. Cir. 1986); see also In re Wood,
599 F.2d 1032, 1036, 202 USPQ 171, 174 (CCPA 1979) and In re Bigio,
381 F.3d 1320, 1325, 72 USPQ2d 1209, 1212 (Fed. Cir. 2004).
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 v. Teleflex Inc., 127 S. Ct. 1727, 1741, 82 USPQ2d
1385, 1396 (2007) (quoting In re Kahn, 441 F.3d 977, 988, 78 USPQ2d
1329, 1336 (Fed. Cir. 2006)).
ANALYSIS
Appellants contend that Examiner erred in rejecting claims 1 to 59
under 35 U.S.C. §§ 102(b) and 103(a). Reviewing the documents of record
in the file and the findings of facts cited above, we address the key issue
raised by the Appellants, namely, “There is no disclosure or suggestion for
determining if a query needs to be recast within Reimer et al. Furthermore,
there is no disclosure or suggestion for prompting for user input if the query
needs to be recast within Reimer et al.” (Br. 8, l. 4.)
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