Ex parte GARNEY - Page 5

              Appeal No. 1997-2056                                                                                        
              Application No. 08/019,798                                                                                  

              a patent.   See In re Oetiker, 977 F.2d 1443, 1445,  24  USPQ2d 1443, 1444 (Fed. Cir.                       

              1992).  On appeal to the Board, an applicant can overcome a rejection by showing                            
              insufficient evidence of prima facie obviousness or by rebutting the prima facie case with                  
              evidence of secondary indicia of nonobviousness.”  In re Rouffet, 149 F.3d 1350, 1355,                      

              47 USPQ2d 1453, 1455 (Fed. Cir. 1998).  Here, we find that appellants have overcome                         
              the prima facie case of obviousness by showing insufficient evidence by the examiner of                     
              obviousness.  Therefore, we will not sustain the rejection of process claim 17 nor                          
              corresponding apparatus claim 27 which contains the same claim language.                                    
                     Appellant argues that the Lien patent teaches the storage of the device driver in the                
              adapter rather than in mass memory in the computer system for input of the device driver                    
              to the RAM of the computer after the computer has been initially booted.  (See brief at                     
              page 5.)   The examiner acknowledges this deficiency in Lien and relies upon                                
              the teaching of Hughes.  Hughes is directed to a networked system where the remote                          
              terminals initially perform booting by interfacing with a controller and downloading relevant               
              files and drivers from the mass memory of the controller to perform the initial bootstrap                   
              initialization or initial program load.  (See answer at pages 3-4 and brief at pages 9-10.)                 
              Therefore, the Hughes reference does not teach or suggest the storage of the device                         
              drivers for retrieval and use after the bootstrap initialization while an application program is            
              running, as recited in the language of claim 17.  (See brief at page 10.)  The examiner                     


Page:  Previous  1  2  3  4  5  6  7  8  Next 

Last modified: November 3, 2007