Appeal No. 2005-2273 Page 7
Application No. 10/319,026
2. Obviousness Determination
"Having determined what subject matter is being claimed, the next inquiry is
whether the subject matter would have been obvious." Ex Parte Massingill, No. 2003-
0506, 2004 WL 1646421, at *3 (Bd.Pat.App & Int. May 20, 2004). "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 Rijckaert, 9 F.3d 1531, 1532, 28 USPQ2d 1955,
1956 (Fed. Cir. 1993) (citing In re Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d 1443,
1444 (Fed. Cir. 1992)). A prima facie case of obviousness is "based on underlying
factual determinations including . . . what th[e] prior art teaches explicitly and
inherently. . . ." In re Zurko, 258 F.3d 1379, 1383, 59 USPQ2d 1693, 1696 (Fed. Cir.
2001) (citing Graham v. John Deere Co., 383 U.S. 1, 17-18, 148 USPQ 459, 467
(1966); In re Dembiczak, 175 F.3d 994, 998, 50 USPQ 1614, 1616 (Fed. Cir. 1999); In
re Napier, 55 F.3d 610, 613, 34 USPQ2d 1782, 1784 (Fed. Cir. 1995)).
Here, the examiner admits, "Karp et al. did not explicitly state that temporary
imbalances between the rate that instructions are issued and executed arise in his
system." (Examiner's Answer at 6.) Instead, the examiner relies on his
aforementioned assertion that such temporary imbalances are inherent to Karp.
"To establish inherency, the extrinsic evidence 'must make clear that the missing
descriptive matter is necessarily present in the thing described in the reference, and that
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