Appeal No. 1999-0080
Application No. 08/558,929
In rejecting claims under 35 U.S.C. § 103, the examiner bears the initial burden of
presenting a prima facie case of obviousness. See In re Rijckaert, 9 F.3d 1531, 1532,
28 USPQ2d 1955, 1956 (Fed. Cir. 1993). A prima facie case of obviousness is
established by presenting evidence that the reference teachings would appear to be
sufficient for one of ordinary skill in the relevant art having the references before him to
make the proposed combination or other modification. See In re Lintner, 9 F.2d 1013,
1016, 173 USPQ 560, 562 (CCPA 1972). Furthermore, the conclusion that the claimed
subject matter is prima facie obvious must be supported by evidence, as shown by
some objective teaching in the prior art or by knowledge generally available to one of
ordinary skill in the art that would have led that individual to combine the relevant teachings
of the references to arrive at the claimed invention. See In re Fine, 837 F.2d 1071, 1074,
5 USPQ2d 1596, 1598 (Fed. Cir. 1988).
The examiner states that “[i]t would have been obvious to one of ordinary skill in the
art to execute the boot-up routine and then the enabler file so that system compatibility can
be determined before loading lengthy operating system code” (Office action at page 4 as
incorporated by the examiner at page 5 of the answer), but the examiner provides no
support or motivation in the prior art applied for this conclusion.
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