Appeal 2007-0929
Application 10/000,774
the specification are not to be read into the claims. In re Zletz, 893 F.2d 319,
321-22, 13 USPQ2d 1320, 1322 (Fed. Cir. 1989).
2. Obviousness
To reach a conclusion of obviousness under § 103, the
Examiner bears the burden of producing factual basis supported by
teaching in a prior art reference or shown to be common knowledge of
unquestionable demonstration. Our reviewing court requires this
evidence in order to establish a prima facie case. In re Piasecki, 745
F.2d 1468, 1471-72, 223 USPQ 785, 787-88 (Fed. Cir. 1984).
Furthermore, the test for obviousness is what the combined teachings
of the references would have suggested to one of ordinary skill in the art.
See In re Kahn, 441 F.3d 977, 987-988, 78 USPQ2d 1329, 1336 (Fed. Cir.
2006), In re Young, 927 F.2d 588, 591, 18 USPQ2d 1089, 1091 (Fed. Cir.
1991) and In re Keller, 642 F.2d 413, 425, 208 USPQ 871, 881 (CCPA
1981).
ANALYSIS
1. Scope of Claim 21
Claim 21 specifies that the “route indicator” has a “value” that is
“dependent on an indication of a delivery error for a message previously to
be routed to said destination.” The Examiner contends that the phrase “a
message previously to be routed to said destination” is broad enough to read
on a message previously intended for routing to the destination, whether or
not an attempt for its transmission was made that resulted in failure (Answer
6-8). The Examiner further contends that the recited “indication of a
7
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