Appeal No. 96-2576
Application 08/148,271
776 F.2d 281, 293, 227 USPQ 657, 664 (Fed. Cir. 1985), 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. Note In re Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d
1443, 1444 (Fed. Cir. 1992).
As indicated by the cases just cited, the examiner has at
least two responsibilities in setting forth a rejection under 35
U.S.C. § 103. First, the examiner must identify all the
differences between the claimed invention and the teachings of
the prior art. Second, the examiner must explain why the
identified differences would have been the result of an obvious
modification of the prior art. Since the differences between the
claimed invention and the applied prior art in this case appear
to have been properly identified and argued by the examiner and
appellant, the question for disposition is whether the examiner’s
conclusion of obviousness is supported by the evidence of record
in this case and the analysis provided by the examiner.
With respect to independent claim 1, appellant argues
that the following recitations of the claim are not suggested by
the applied prior art: (1) the semiconductor chip has a plurality
5
Page: Previous 1 2 3 4 5 6 7 8 9 Next
Last modified: November 3, 2007