Ex parte HILLIS et al. - Page 7




              Appeal No. 1999-2375                                                                                     
              Application No. 08/892,822                                                                               


              maintained by the examiner.  Furthermore, we find that the examiner has not established a                
              convincing line of reasoning for the combination separate for the teachings of the                       
              references.  While each of the references teaches a portion of the claimed invention, we                 
              do not find a motivation to weave them together to achieve the invention as recited in                   
              independent claims 6, 16 and 17.  While we do find motivation to provide for the                         
              shadowing of the BIOS in Bealkowski with the compression of the BIOS in Kikinis, we do                   
              not find any motivation to look to the teachings of Chambers to decompress a portion of                  
              the compressed BIOS.  From our understanding of Chambers,  Chambers is concerned                         
              with direct reads from compressed data files and these data files are requested in                       
              response to an application program which issues data file excess requests.  (See                         
              Chambers at columns 3-4.)  We find that these data access requests do not suggest the                    
              decompression of a portion of a compressed BIOS and the examiner has not addressed                       
              the difference between a BIOS and an application program.  Therefore, we agree with                      
              appellants and find that the examiner has not established a prima facie case of                          
              obviousness with respect to independent claims 6, 16 and 17.                                             
                     With respect to dependent claim 15, appellants argue the difference in reasons for                
              compressing and decompressing the BIOS and rely on the patentability of dependent                        
              claim 11.  (See brief at page 7.) Since we sustained the rejection of dependent claim 11                 
              with independent claim 1, and since no specific arguments were made for patentability of                 


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