Appeal No. 1997-2112
Application No. 08/398,831
argue, inter alia, that the examiner has ignored significant
details in Claims 14, 27, 32, and 34. (See Brief, page 8.)
Obviousness is a question of law based on findings of
underlying facts. See Graham v. John Deere Co., 383 U.S. 1,
17, 148 USPQ 459, 467 (1966). The examiner bears the initial
burden of presenting a prima facie case of unpatentability.
In re Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444 (Fed.
Cir. 1992).
We cannot sustain the rejection for the reason that the
examiner has failed to set out a prima facie case of
obviousness of the claimed subject matter. Two brief steps
are listed on page 5 of the Answer as purportedly being
disclosed by Dahbura, and two brief steps are listed on the
same page as purportedly not being disclosed by Dahbura. As
such, the conclusion of obviousness is not supported by the
required factual findings regarding the differences between
the claims and the prior art.
For example, each of Claims 14, 27, 32, and 34 recite
that “each Test Subsequence (TS) comprises one Selected Edge-
Under-Test (EUT) I/O Sequence and the I/O Sequence
corresponding to the Edge-Under-Test (EUT) corresponding to
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