Appeal 2007-1978
Application 10/185,702
of storing transmitted messages in a queue teaches that limitation. (Answer
13.)
ISSUE
The pivotal issues in the appeal before us are as follows:
1. Have Appellants shown3 that the Examiner failed to establish that the
disclosure of Matsunami anticipates the claimed invention under
35 U.S.C. § 102(e)? Particularly, does Matsunami’s disclosure anticipate
the claimed invention given that Matsunami teaches a read request including
command bytes to access a storage device, a start logic address, and a
transfer length?
2. Have Appellants shown that the Examiner failed to establish that the
combined disclosures of Matsunami, Cesar and Bennett render the claimed
3 In the examination of a patent application, the Examiner bears the
initial burden of showing a prima facie case of unpatentability. In re
Piasecki, 745 F.2d 1468, 1472 (Fed. Cir. 1984). When that burden is met,
the burden then shifts to the applicant to rebut. Id.; see also In re Harris,
409 F.3d 1339, 1343-44 (Fed. Cir. 2005) (finding rebuttal evidence
unpersuasive). If the applicant produces rebuttal evidence of adequate
weight, the prima facie case of unpatentability is dissipated. Piasecki, 745
F.2d at 1472. Thereafter, patentability is determined in view of the entire
record. Id. However, Appellant has the burden on appeal to the Board to
demonstrate error in the Examiner’s position. See In re Kahn, 441 F.3d 977,
985-86 (Fed. Cir. 2006) (“On appeal to the Board, an applicant can
overcome a rejection [under § 103] by showing insufficient evidence of
prima facie obviousness or by rebutting the prima facie case with evidence
of secondary indicia of nonobviousness.”) (quoting In re Rouffet, 149 F.3d
1350, 1355 (Fed. Cir. 1998)).
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