Ex Parte Malone - Page 5

               Appeal 2007-1696                                                                            
               Application 10/230,745                                                                      

                                                 Poynor                                                    
                      4. Poynor teaches a system and method for editing a file                             
               (Abstract).                                                                                 
                      5. An initial edit is effected on an original character string within a              
               designated edit region.  Subsequent instances of the original character string              
               are identified within the edit region, and suggested edits to subsequent                    
               instances of the original character string are derived from the original edit               
               (para. [0021]; Fig. 4).                                                                     
                      6. At the user’s suggestion, all of the suggested edits can either be                
               automatically made, or made to only a subset of the subsequent instances, in                
               response to a user selection command (para. [0022]; Fig. 5).                                

                                         PRINCIPLES OF LAW                                                 
                      In rejecting claims under 35 U.S.C. § 103, the Examiner bears the                    
               initial burden of establishing a prima facie case of obviousness.  In re                    
               Piasecki, 745 F.2d 1468, 1472, 223 USPQ 785, 788 (Fed. Cir. 1984).  The                     
               Examiner can satisfy this burden by showing some articulated reasoning                      
               with some rational underpinning to support the legal conclusion of                          
               obviousness.  KSR Int’l. v. Teleflex Inc., 127 S. Ct. 1727, 1741, 82 USPQ2d                 
               1385, 1396 (2007) (citing In re Kahn, 441 F.3d 977, 988, 78 USPQ2d 1329,                    
               1336 (Fed. Cir. 2006)).  Only if this initial burden is met does the burden of              
               coming forward with evidence or argument shift to the Appellant.  Piasecki,                 
               745 F.2d at 1472, 223 USPQ at 788.  Thus, the Examiner must not only                        
               assure that the requisite findings are made, based on evidence of record, but               



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