Appeal 2007-1979
Application 10/041,141
In reply, the “Examiner also notes that ‘901 provisional application
comprises 200 pages and examiner provides 7 pages over 200 pages to
indicate to appellant that the cited portions in Upton are supported in the
‘901 provisional” (Ans. 8). The Examiner specifically explained that page
8-3 in the ‘901 provisional supports the claimed limitation of “redisplaying
the form with error message next to each erroneous field,” and that pages 8-
5 and 8-6 in the ‘901 provisional application supports the claimed limitation
of “displaying a localized error message next to the form field if the
submitted data is invalid” (Ans. 9).
ISSUES
Did the Examiner provide the Appellants with a reasonable notice of
the portions of the ‘901 provisional application1 that are relied upon by the
Examiner in the obviousness rejection?
Does the applied prior art teach or would it have suggested selection
of an error text corresponding to a validation error?
FINDINGS OF FACT
The facts needed to resolve the issues on appeal are recited supra.
PRINCIPLES OF LAW
The Examiner bears the initial burden of presenting a prima facie case
of obviousness. In re Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444
(Fed. Cir. 1992). If that burden is met, then the burden shifts to the
Appellants to overcome the prima facie case with argument and/or evidence.
See Id.
1 See “Most Publicly Available Provisional Applications Can Now be Viewed Over the Internet,” 1288 Off.
Gaz. Pat. Office 169 (Nov. 23, 2004).
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