Ex Parte Hensbergen et al - Page 10


               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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