Appeal No. 96-0137
Application 08/074,978
the art at the time the invention was made to provide automatic means to
initiate the fitting or pin selection function to replace the manual activity. In re Venner, 262 F.2d 91,
120 USPQ 192 (CCPA 1958).
Appellants’ argument that the solution list of the prior art is not ordered is not persuasive. We
agree with the examiner that none of claims 9-12 recites such a list. The argument is simply not
commensurate in scope with the claims . 4
The Rejection under 35 U.S.C. § 103
Claims 13 and 14
In their brief appellants take a position to the effect that the prior art does not teach a
partitioning file memory for storing user partitioning directives as recited in claims 13 and 14. The
examiner is silent with respect to the existence of such a memory in the prior art.
We will not sustain this rejection. By not addressing the above limitation, the Patent Office has
not fulfilled its burden of establishing prima facie obviousness of the claimed subject matter. The burden
4Even if the claims recited an ordered solution list, they would not appear to be directed to allowable subject
matter. At the last paragraph of page C1 of the HP PLDDS Standard Utilities Manual, it is disclosed that
PLDDS presents a window of numbered usable devices in the order of their usefulness. Such a window
constitutes an ordered solution list.
We have not referred to the last two references which are indicated above as relied on by the examiner.
These references do not appear to teach anything concerning the production of an ordered solution list of
useable devices beyond that taught by the HP PLDDS Standard Utilities Manual.
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