Ex parte PAWATE et al. - Page 5




               Appeal No. 96-1319                                                                                               
               Application 07/934,982                                                                                           



               This combination does not suggest that the smart memory should operate in both a                                 
               standard mode as well as the smart mode.  Nusinov teaches integrated circuits having                             
               improved functionality which can operate as standard circuits (standard mode) with old                           
               devices, but can operate in enhanced modes (smart mode) with newer equipment.  The                               
               examiner concludes that it would have been obvious to combine the collective teachings of                        
               Nicoud, Witt and Nusinov to arrive at the invention of the independent claims [answer,                           
               pages 3-4].                                                                                                      
                      In our view, the examiner’s analysis is sufficiently reasonable that we find that the                     
               examiner has satisfied the burden of presenting a prima facie case of obviousness.  That                         
               is, the examiner’s analysis, if left unrebutted, would be sufficient to support a rejection                      
               under 35 U.S.C. § 103.  The burden is, therefore, upon appellants to come forward with                           
               evidence or arguments which persuasively rebut the examiner’s prima facie case of                                
               obviousness.  Appellants have presented several substantive arguments in response to                             
               the examiner’s rejection.  Therefore, we consider obviousness based upon the totality of                         
               the evidence and the relative persuasiveness of the arguments.                                                   
                      With respect to these independent claims, appellants argue that “none of these                            
               references disclose or suggest the external leads arranged so that the smart video                               
               memory is directly accessible as a standard memory device by the external device while                           



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