Ex parte DESHPANDE - Page 5




          Appeal No. 1999-2286                                       Page 5           
          Application No. 08/352,660                                                  


          request and data substantially simultaneously, said request                 
          being transmitted during said transmission of said data ...."               
          Similarly, claims 7, 9, and 10 specify in pertinent part the                
          following limitations: "said first subsystem transmitting a                 
          request and data substantially simultaneously, said request                 
          being transmitted during said transmission of said data.”                   
          Accordingly, claims 1-7, 9, and 10 require inter alia a first               
          subsystem transmitting a request to use a bus substantially                 
          simultaneously with data to be transmitted on the bus.                      


               The examiner fails to show a teaching or suggestion of                 
          the limitations in the applied prior art.  "’A prima facie                  
          case of obviousness is established when the teachings from the              
          prior art itself would appear to have suggested the claimed                 
          subject matter to a person of ordinary skill in the art.’"  In              
          re Bell, 991 F.2d 781, 782, 26 USPQ2d 1529, 1531 (Fed. Cir.                 
          1993) (quoting In re Rinehart, 531 F.2d 1048, 1051, 189 USPQ                
          143, 147 (CCPA 1976)).                                                      


               Here, Nakada teaches that a first processor transmits a                
          request to use a bus.  Specifically, “[w]hen Processor 1 needs              







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