Ex parte SAITO - Page 7




          Appeal No. 2000-1289                                       Page 7           
          Application No. 08/604,829                                                  


          devices and said external communication means  enabling                     
          connection alternately between (a) and (b): (a) said second                 
          group of memory devices and said magnetic disk communication                
          means and between said first group of memory devices and said               
          external communication means; and (b) said first group of                   
          memory devices and said magnetic disk communication means and               
          between said second group of memory devices and said external               
          communication means. . . ."  Accordingly, the claim requires                
          switching between two groups of memories having the same                    
          structure so that the two groups are used alternately.                      


               Having determined what subject matter is being claimed,                
          the next inquiry is whether the subject matter is obvious.                  
          “In rejecting claims under 35 U.S.C. Section 103, the examiner              
          bears the initial burden of presenting a prima facie case of                
          obviousness.”  In re Rijckaert, 9 F.3d 1531, 1532, 28 USPQ2d                
          1955, 1956 (Fed. Cir. 1993)(citing In re Oetiker, 977 F.2d                  
          1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir. 1992)).  "’A prima              
          facie case of obviousness is established when the teachings                 
          from the prior art itself would appear to have suggested the                








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