Appeal 2007-0941
Application 10/165,068
database of alternate destinations for packet data (co1.7, lines 40-42, co1.8,
lines 37-45, col.15, lines 48-49) (Answer 9 and 13).
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 (1966). “[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.2d 1443, 1445, 24 USPQ2d 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)).
After carefully reviewing the multiple portions of Bommareddy cited
by the Examiner in the rejection, we only find the teaching of a “back-end
database server 816” interconnected to clustered servers 812 (fig. 8, col. 15,
ll. 48-49). After reviewing the Examiner’s rejections of claims 3-5, 11-13,
and 18, we find the Examiner has failed to adequately set forth in the record
exactly how Bommareddy’s backend database server meets the limitations
of the claims. We further find the Examiner’s proffered motivation
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