Appeal No. 2000-0235
Application No. 08/765,502
Rather than repeat the arguments of appellants and the examiner we make reference to the
brief (paper no. 13), reply brief (paper no. 15) and the examiner’s answer (paper no. 14) for the
respective details thereof.
OPINION
We have considered the rejections advanced by the examiner and the supporting arguments.
We have, likewise, reviewed the appellants’ arguments set forth in the briefs.
We reverse.
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); In re Oetiker, 977 F.2d 1443, 1446, 24 USPQ 1443, 1445 (Fed. Cir.
1992)), which is established when the teachings of the prior art itself would appear to have
suggested the claimed subject matter to one ordinary skill in the art. (See In re Bell, 991 F.2d 781,
783, 26 USPQ2d 1529, 1531, (Fed. Cir. 1993)).
Before establishing a prima facie case of obviousness, the examiner must interpret the scope
of the claims because “[t]he name of the game is the claim.” In re Hiniker Co., 150 F.3d 1362,
1369, 47 USPQ2d 1523,1529 (Fed. Cir. 1998). Claims will be given their broadest reasonable
interpretation consistent with the specification, and limitations appearing in the specification are not
to be read into the claims. In re Etter, 756, F.2d 852, 858, 225 USPQ 1, 5 (Fed. Cir. 1985).
Appellants’ claim 11, the only independent claim, recites the limitation of “only one data
storage unit having a data storage medium for storing a digitally coded road map and information
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