Appeal No. 1998-0460 Page 7
Application No. 08/480,765
(CCPA 1976)). If the examiner fails to establish a
prima facie case, the rejection is improper and will
be overturned. In re Fine, 837 F.2d 1071, 1074, 5
USPQ2d 1596, 1598 (Fed. Cir. 1988).
With these standards in mind, we address the examiner’s
rejection and the appellants’ argument.
At the outset, we observe that the examiner fails to map
the exact and complete language of the claims to the teachings
of the Cheung. He also neglects to identify the language of
the claims missing from the reference that is required in the
obviousness rejection analysis. In addition, the examiner
omits an explanation of how he proposes to modify Cheung or
why one of ordinary skill in the art would have been motivated
to do so.
The appellants argue, “the Cheung patent does not
disclose or contemplate the operation of downloading new
program code for the control program of the computer that
operates and controls the features of the subscriber terminal
....” (Appeal Br. at 15.) The examiner replies, “In Cheung
though, the entertainment program codes still can be said to
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