Appeal No. 1999-0080
Application No. 08/558,929
730 F.2d 1452, 1462, 221 USPQ 481, 488 (Fed. Cir. 1984). In determining
obviousness/nonobviousness, an invention must be considered "as a whole," 35 U.S.C. §
103, and claims must be considered in their entirety. Medtronic, Inc. v. Cardiac
Pacemakers, Inc., 721 F.2d 1563, 1567, 220 USPQ 97, 101 (Fed. Cir. 1983).
Since the limitation that “said enabler file being initially stored in a read-write
memory device so that said enabler file may be replaced with an updated enabler file
when system changes are made in said computing system” is not clearly taught or fairly
suggested by the combination of Sherer and Arnold, we will not sustain the rejection of
claim 21. Since claims 22-26 contain similar limitations which are not taught or suggested
by Sherer and Arnold, we will not sustain the rejection of claim 22-26 and the dependent
claims 2-6, 11-17 and 27. The examiner relies upon Schmidt and Mitani for various
limitations in dependent claims, but does not rely on these teachings for the subject matter
lacking as discussed above and these teachings do not remedy the deficiency in the
combination.
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