Appeal No. 1996-2369 Page 7
Application No. 08/191,723
We begin our consideration of the nonobviousness of
claims 1, 3, and 5-8, by noting three principles from In re
Rijckaert, 9 F.3d 1531, 1532, 28 USPQ2d 1955, 1956 (Fed. Cir.
1993). (1) In rejecting claims under § 103, the patent
examiner bears the initial burden of establishing a prima
facie case of obviousness. (2) A prima facie case is
established when teachings from the prior art would appear to
have suggested the claimed subject matter to a person of
ordinary skill in the art. (3) If the examiner fails to
establish a prima facie case, an obviousness rejection will be
reversed. With these in mind, we analyze the appellants’
arguments.
Regarding claims 1 and 5-7, the appellants begin by
arguing that “the description of Figures 1 through 3 and the
present disclosure at most merely mention address bits and do
not imply or remotely suggest the existence of a predetermined
number of extended bits or logically combining such extended
bits with the address bits.” (Appeal Br. at 17.) They add,
“merely because an address data is [sic] ‘discriminated’, it
does not follow that the erroneous
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