Appeal No. 97-2111
Application 08/158,345
obviousness. Note In re Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d
1443, 1444 (Fed. Cir. 1992). If that burden is met, the burden
then shifts to the applicant to overcome the prima facie case
with argument and/or evidence. Obviousness is then determined on
the basis of the evidence as a whole. See Id.; In re Hedges, 783
F.2d 1038, 1039, 228 USPQ 685, 686 (Fed. Cir. 1986); In re
Piasecki, 745 F.2d 1468, 1472, 223 USPQ 785, 788 (Fed. Cir.
1984); and In re Rinehart, 531 F.2d 1048, 1052, 189 USPQ 143, 147
(CCPA 1976).
With respect to independent claim 20, the examiner has
considered the teachings of Burchard and Gamache and has
explained why it would have been obvious to combine the teachings
of these two references to arrive at the claimed invention
[answer, page 3]. Considering the breadth of claim 20, we are of
the view that the examiner has at least satisfied the burden of
presenting a prima facie case of obviousness. Therefore, we
consider appellant’s arguments and the relative persuasiveness of
all the evidence.
Appellant’s first argument is that neither reference
teaches the claimed first step of determining when an external
test (EXTEST) instruction will assert a system action [brief,
page 6]. Burchard teaches a Boundary-Scan architecture which is
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