Ex parte SCHIEVE - Page 6




          Appeal No. 96-3850                                                          
          Application No. 08/253,480                                                  


          combination, but rather whether or not there is some reason                 
          why one having ordinary skill in the pertinent art would have               
          been led to modify the prior art or to combine prior art                    
          references to arrive at the claimed invention.  Such reason                 
          must stem from some teaching, suggestion or implication in the              
          prior art as a whole or knowledge generally available to one                
          having ordinary skill in the art.  Uniroyal, Inc. v. Rudkin-                
          Wiley, 837 F.2d 1044, 1052, 5 USPQ2d 1434, 1439 (Fed. Cir.                  
          1988); Ashland Oil, Inc. v. Delta Resins & Refractories, Inc.,              
          776 F.2d 281, 293, 227 USPQ 657, 664 (Fed. Cir. 1985); ACS                  
          Hospital Systems, Inc. v. Montefiore Hospital, 732 F.2d 1572,               
          1577, 221 USPQ 929, 933 (Fed. Cir. 1984); In re Sernaker, 702               
          F.2d 989, 994, 217 USPQ 1, 5 (Fed. Cir. 1983).  Since the                   
          examiner has provided no prior art that teaches "a                          
          read/writable memory formed in the same semiconductor chip as               
          the microprocessor and ordinarily inoperative during the                    
          POST," with "a diagnostic interrupt vector table set in the                 
          read/writable memory," (underlining added for emphasis) the                 
          examiner has failed to set forth a prima facie case of                      
          obviousness.                                                                


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