Appeal No. 1998-2982
Application No. 08/582,716
rigorous application of the requirement for a showing of the teaching or motivation to
combine prior art references. See, e.g., In re Dembiczak, 175 F.3d 994, 998-99, 50
USPQ2d 1614, 1616-17 (Fed. Cir. 1999).
Further, we agree with appellants’ observations on pages 2 and 3 of the Reply Brief
in answer to the examiner’s commentary on page 4 of the Answer. Simply proposing use
of a latch as a memory element in the Jagini device does not speak to the specific
requirements of independent claims 1 and 11.
The allocation of burdens requires that the USPTO produce the factual basis for its
rejection of an application under 35 U.S.C. § § 102 and 103. In re Piasecki, 745 F.2d
1468, 1472, 223 USPQ 785, 788 (Fed. Cir. 1984) (citing In re Warner, 379 F.2d 1011,
1016, 154 USPQ 173, 177 (CCPA 1967)). The one who bears the initial burden of
presenting a prima facie case of unpatentability is the examiner. In re Oetiker, 977 F.2d
1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir. 1992). That burden has not been met in
the instant case. Accordingly, we do not sustain the rejection of claims 1-7, 10, and 11
under 35 U.S.C. § 103 as being unpatentable over Jagini and Renfro.
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