Appeal No. 1997-2439
Application 08/417,701
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). "Additionally,
when determining obviousness, the claimed invention should be considered as a whole; there is no
legally recognizable 'heart' of the invention." Para-Ordnance Mfg. v. SGS Importers Int'l, Inc., 73
F.3d 1085, 1087, 37 USPQ2d 1237, 1239 (Fed. Cir. 1995), cert. denied, 519 U.S. 822 (1996),
citing W.L. Gore & Assocs., Inc. v. Garlock, Inc., 721 F.2d 1540, 1548, 220 USPQ 303, 309
(Fed. Cir. 1983), cert. denied, 469 U.S. 851 (1984).
On pages 7 through 8 of the brief, Appellants argue that Frieder does not disclose either
expressly or impliedly, that the I/O bus 102 has a first set of fixed addresses associated with the I/O
bus 102, I/O bus 104 has a second set of fixed addresses associated with the I/O bus 104 and the first
set of fixed addresses are the same as the second set of fixed addresses. Appellants argue that since
Frieder does not disclose the claim limitation that "the first set of fixed addresses are the same as the
second set of fixed addresses" the proposed combination of Frieder and Johnson does not arrive at the
invention of Appellants' claims.
We note that independent claim 16 recites:
a first I/O bus connected to said first I/O interface circuit, wherein the first I/O bus has
a first set of fixed addresses associated with said first I/O bus; and a second I/O bus
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