Ex parte KIMURA - Page 4




               Appeal No. 97-1638                                                                                                    
               Application 08/371,446                                                                                                




                       Claims 4, 5, 8 and 12-14 are rejected under 35 U.S.C. § 103 as being unpatentable over Yeh.                   

                       The respective positions of the examiner and the appellant with regard to the propriety of these              

               rejections are set forth in the final rejection (Paper No. 18) and the examiner’s answer (Paper No. 24)               

               and the appellant’s brief (Paper No. 23).                                                                             

                                                              Opinion                                                                

                       We will not sustain the rejection of claims 2, 6, 9 and 10 under 35 U.S.C. § 103.  The                        

               examiner has not addressed appellant’s argument that the above claims distinguish over the cited                      

               references in the recitation of a solid-state disk card and an OS/application card.   Furthermore,                    

               appellant argues that it has not been shown in the rejection that any of the prior art references teaches             

               or suggests IC cards detachably mounted to a mother board having a main bus and an input/output bus                   

               separated by a bus interface card.  The examiner’s position that Mitchell, Lunsford, Le and Ogawa                     

               disclose electronic devices which “…should have mother boards” having a main bus and an                               

               input/output bus is not supported by evidence.  Even if it were presumed the prior art suggests the use               

               of a mother board, there is no showing that it would have been obvious for one of ordinary skill in the               

               art to include the claimed bus interface card on the board.                                                           






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