Appeal No. 96-3978
Application No. 08/092,628
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).
With respect to independent claims 21 and 23, the Examiner
seeks to modify the memory system of Bowater by relying on
Morgan to supply the missing teaching of providing
configuration information from a memory in response to a query
by a memory controller.
In response, Appellant (Brief, page 13) asserts a lack of
suggestion or motivation in the references for combining or
modifying teachings to establish a prima facie case of
obviousness. After careful review of the Bowater and Morgan
references, we are in agreement with Appellant's stated
position in the Briefs. The mere fact that the prior art may
be modified in the manner suggested by the Examiner does not
make the modification obvious unless the prior art suggested
the desirability of the modification. In re Fritch, 972 F. 2d
1260, 1266, 23 USPQ2d 1780, 1783-84 (Fed. Cir. 1992). The
Examiner's statement of the grounds of rejection at pages 4 and
6
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