Appeal No. 1998-3326 Page 5
Application No. 08/498,819
In rejecting claims under 35 U.S.C. Section 103, 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).... "A prima facie case of obviousness is
established when the teachings from the prior art
itself would appear to have suggested the claimed
subject matter to a person of ordinary skill in the
art." In re Bell, 991 F.2d 781, 782, 26 USPQ2d
1529, 1531 (Fed. Cir. 1993) (quoting In re Rinehart,
531 F.2d 1048, 1051, 189 USPQ 143, 147 (CCPA 1976)).
With these principles in mind, we consider the examiner's
rejection and the appellants' argument.
The examiner asserts, "Miyazaki discloses an invention
substantially as claimed, including a data processing ('DP')
system comprising ... initializing means [column 4 (line 67) -
column 5 (line 12)]". (Examiner's Answer at 3.) The
appellants argue, “neither Miyazaki nor Okada et al. disclose
or suggest the fundamental concept of initialization means
resetting the counter in response to a signal from an external
circuit." (Appeal Br. at 11.)
“‘[T]he main purpose of the examination, to which every
application is subjected, is to try to make sure that what
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