Appeal 2007-1715 Page 12
Application 10/033,224
Br. 20. Appellant does not address whether the prior art meets the limitations of
steps a)-c) and therefore does not dispute the Examiner’s position that that they are
suggested by the prior art.
The issue is whether the evidence would have led one of ordinary skill in the
art to combine the relevant teachings of the references to arrive at the claimed
invention.
B. Facts
We incorporate herein the facts set forth in the Facts section for the rejection
of claims 3, 15, and 17 above and add the following fact, all of which the record
supports by a preponderance of the evidence.
1. The subject matter of claim 5 differs from that of claim 3 in calling for the
entering of codes or descriptions of the article and container in which the article is
to be shipped (steps a)-c)) and providing for a database at a second node to which a
query is sent from the routine for a weight associated with the article and container
(i.e., steps d)-f)).
C. Principles of Law
We incorporate herein the Principles of Law set forth in the Principles of
Law section for the rejection of claims 3, 15, and 17 above and add the following:
1. “The prima facie case is a procedural tool of patent examination, allocating
the burdens of going forward as between examiner and applicant. In re Spada, 911
F.2d 705, 707 n.3, 15 USPQ2d 1655, 1657 n.3 (Fed. Cir. 1990). The term “ prima
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