Appeal No. 96-1319
Application 07/934,982
As a general proposition in an appeal involving a rejection under 35 U.S.C. § 103,
an examiner is under a burden to make out a prima facie case of obviousness. If that
burden is met, the burden of going forward 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 and the relative persuasiveness of the arguments. See In
re Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir. 1992); 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). Only those arguments actually made by
appellants have been considered in this decision. Arguments which appellants could have
made but chose not to make in the briefs have not been considered [see 37 CFR §
1.192(a)].
With respect to independent claims 1, 11 and 16, the examiner cites Nicoud as
teaching a smart memory in the form of a video RAM (VRAM). Nicoud does not teach that
the “intelligence” of his smart memory comes from a processor integrated with the memory
on a chip. Witt teaches a smart memory having a computer integrated with memory on a
chip. Witt teaches that these smart memories are particularly advantageous in
applications such as graphics. The examiner combines the teachings of Nicoud and Witt
to obtain a smart VRAM which has memory and a processor on a single integrated circuit.
4
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 Next
Last modified: November 3, 2007