Appeal No. 97-0801
Application 08/168,087
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).
Claims 2-4 depend from claim 1 and add features relating to the allocation of a bank switching
address and horizontal and vertical addresses of a picture image. The examiner admits that Shen has
no disclosure with respect to the allocation of these addresses, but the examiner argues that “some sort
of bit assignment must obviously be assigned for the horizontal (column) and vertical (row) addresses as
shown in Figure 6 of Shen et al as well as obvious bank switch addressing means that may be allocated
between the horizontal address and the vertical address in order to provide the horizontal and vertical
addressing as shown in Figure 6" [answer, page 5]. Appellants complain that the examiner has simply
dismissed the differences between the claimed invention and the teachings of Shen as being obvious
without any supporting evidence [brief, pages 6-7].
We agree with appellants. The fact that some form of address allocation is necessary in Shen
does not render all specific address allocations as being obvious. The examiner has not addressed the
specific limitations of claims 2-4 nor offered any evidence in support of his position that the allocations
as specifically recited in claims 2-4 would have been obvious in
6
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