Appeal No. 1997-2056
Application No. 08/019,798
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.
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
store the device drivers for removable devices in mass memory for retrieval and use after
bootstrap initialization. The language of claim 17 states that “after said bootstrap
initialization while an application program is running and prior to any subsequent bootstrap
initialization, performing the following steps, (a) receiving a removable system resource at
the interface; (b) retrieving a device driver identifier from the removable system resource;
[and] (c) copying a device driver corresponding to said device driver identifier from the
mass storage memory device to the system memory.”
“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 of
obviousness, an applicant who complies with the other statutory requirements is entitled to
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