Appeal No. 98-1396
Application 08/300,666
We find that the Examiner has not met the burden of setting forth a prima facie
case of obviousness in rejecting claim 23. Each of the independent claims contains
similar limitations as discussed above with respect to claim 23. In regard to the 35 U.S.C.
§ 103 rejection, the Examiner has failed to set forth a prima facie case. It is the burden of
the Examiner to establish why one having ordinary skill in the art would have been led to
the claimed invention by the express teachings or suggestions found in the prior art, or by
implications contained in such teachings or suggestions. In re Sernaker, 702 F.2d 989,
995, 217 USPQ 1, 6 (Fed. Cir. 1983). Each of claims 23-26, contain the same basic
limitation concerning the two ROMs, the adder and the latch. Accordingly, we will not
sustain the Examiner's rejection of claims 23-26 under 35 U.S.C. § 103.
Since all the limitations of independent claims 23-26 are not suggested by the
applied prior art, we cannot sustain the Examiner's rejection of appealed claims 2, 7-10,
14, 15, 17, and 27-29 which depend therefrom, under 35 U.S.C. § 103.
CONCLUSION
To summarize, the decision of the Examiner rejecting claims 7-10 under 35 U.S.C.
§ 112, first paragraph is reversed. The decision of the Examiner rejecting claims
2, 7-10, 14, 15 and 17 under 35 U.S.C. § 112, second paragraph is reversed. The
decision of the Examiner rejecting claims 2, 7-10, 14, 15, 17, and 23-29 under 35 U.S.C.
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