Appeal No. 97-3423
Application 08/336,134
The examiner further also explains for the first time in the
Answer (at 4-5) that appellants' SETDOCK system
is similar to all BIOS[]basic input/output system)
programs used by all computers to configure their
operating system prior to operator use. The SETDOCK
routine sets up items such as communication ports,
I/O ports, printer ports, and other hardware needs
so that the system functions correctly internally
and externally. There is no novelty in presetting a
computer[']s operative characteristics prior to
allowing an operator to input requests. Most
computers in use today are booted by a ROM or EPROM
program stored in memory which exclusively sets up
which environment the computer will operate in. In
IBM or compatible systems[,] programs, such as[]
CONFIG.SYS, AUTOEXEC.BAT, and COMMAND.COM[,] are
booted prior to computer usage in order to
initialize the computer's operating system.
Moreover, the ROM or EPROM programming may be
customized by the operator if the system would have
had a recent hardware/software upgrade or previously
unused port activated. The appellant[s'] claimed
invention does not comprise any limitation or
inventive step over the applied reference because
Swindler's computer must, like most computers, be
configured to function optimally in its operating
environment. [Answer at 5.]
In our view, the foregoing arguments for inherent
anticipation, which have not been addressed by appellants (who
did not file a reply brief), are sufficiently strong to shift
the burden to appellants to demonstrate that inherency is
lacking, which they have made no attempt to do. See King,
801 F.2d at 1327, 213 USPQ at 138-139:
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