Appeal No. 96-1286
Application 08/259,360
cert. denied, 475 U.S. 1017 (1986); ACS Hospital Systems, Inc.
v. Montefiore Hospital, 732 F.2d 1572, 1577, 221 USPQ 929, 933
(Fed. Cir. 1984). These showings by the examiner are an
essential part of complying with the burden of presenting a
prima facie case of obviousness. See, e.g., In re Oetiker,
977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir. 1992).
We find that the examiner failed to set forth sufficient
factual basis concerning prior art teachings and suggestions
therefrom to account for all the differences between the
claimed invention and the prior art. Specifically, on page 2
of the final Office action (Paper No. 12), the examiner
recognized and acknowledged that the appellants’ own admitted
prior art does not disclose following the steps of appellants’
claim 1:
1. forming groups of the output states;
2. eliminating selected groups of output states; and
3. assigning a programmable architecture element
for each remaining group of output states.
According to the examiner, this deficiency is made up by
either Nissen or Fuss, in the alternative. In that regard,
the final Office action states (page 2, line 16 to page 3,
6
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