Ex Parte Broussard - Page 6

                Appeal 2007-0279                                                                               
                Application 10/042,079                                                                         
                protection on the disputed claim would allow the patentee to exclude the                       
                public from practicing the prior art, then that claim is anticipated, regardless               
                of whether it also covers subject matter not in the prior art.”) (internal                     
                citations omitted).                                                                            

                                            2.     OBVIOUSNESS                                                 
                In rejecting claims under 35 U.S.C. § 103, the Examiner bears the                              
                initial burden of establishing a prima facie case of obviousness.  In re                       
                Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir. 1992).  See                      
                also In re Piasecki, 745 F.2d 1468, 1472, 223 USPQ 785, 788 (Fed. Cir.                         
                1984).  The Examiner can satisfy this burden by showing that some                              
                objective teaching in the prior art or knowledge generally available to one of                 
                ordinary skill in the art suggests the claimed subject matter.  In re Fine, 837                
                F.2d 1071, 1074, 5 USPQ2d 1596, 1598 (Fed. Cir. 1988).  Only if this initial                   
                burden is met does the burden of coming forward with evidence or argument                      
                shift to the Appellant.  Oetiker, 977 F.2d at 1445, 24 USPQ2d at 1444.  See                    
                also Piasecki, 745 F.2d at 1472, 223 USPQ at 788.  Thus, the Examiner                          
                must not only assure that the requisite findings are made, based on evidence                   
                of record, but must also explain the reasoning by which the findings are                       
                deemed to support the Examiner’s conclusion                                                    


                                                 ANALYSIS                                                      
                As set forth above, Appellant’s invention requires removing all                                
                references to software in a second object-oriented software package to                         
                generate a compilation interface from a first object-oriented software                         
                package.  In contrast, as set forth in the statement of facts section above,                   

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