Ex parte NONAMI - Page 4




             Appeal No. 1997-1925                                                                               
             Application No. 08/465,315                                                                         


                                                   OPINION                                                      

                   In reaching our decision in this appeal, we have given careful consideration to the          
             appellant's specification and claims, to the applied prior art references, and to the              
             respective positions articulated by the appellant and the examiner.  As a consequence of           
             our review, we make the determinations which follow.                                               
                                              Nickel and Culley                                                 

                   As pointed out by our reviewing court, we must first determine the scope of the              

             claim.  "[T]he name of the game is the claim."  In re Hiniker Co., 150 F.3d 1362, 1369, 47         

             USPQ2d 1523, 1529 (Fed. Cir. 1998).  We find that the examiner has not provided a                  
             teaching or convincing line of reasoning why one skilled in the art would have desired to          
             “enabl[e] the operation of said digital signal processor according to the signal procedures        
             transferred from said ROM and stored in said RAM” and to have the “control processor               
             connected in interprocessor communication with said digital signal processor for reading           
             from said ROM” as set forth in the language of claim 1.                                            
                   “To reject claims in an application under section 103, an examiner must show an              

             unrebutted prima facie case of obviousness.   See In re Deuel, 51 F.3d 1552, 1557,  34             

             USPQ2d 1210, 1214 (Fed. Cir. 1995).  In the absence of a proper prima facie case                   





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