Appeal No. 2001-1571
Application No. 09/062,002
substantially the same type of structure, there still must be a showing of a suggestion,
at the least, to use two distinct structures in the manner required by the claims.
We thus agree with appellants that the rejection fails to set forth a case for prima
facie obviousness with respect to independent claims 1 and 6 by reason of the
deficiency in accounting for the specifics of all the claim limitations. As such, the
burden has not shifted to appellants to provide evidence in rebuttal. We note, however,
that appellants refer to a declaration of record filed under “37 C.F.R. § 1.131” [sic; 37
CFR § 1.132] by a co-inventor of the invention described by the Martens reference.
The declaration at page 2, paragraph 5, reflects an assumption that the rejection reads
the “translation array” on instruction MMU 114 and/or data MMU 116 (Figure 1) of
Martens, or some portion thereof. This assumption may have been made due to the
statement of the rejection (Final Rejection at 3) referring to structures 126 and 128
(contained within MMU 114 and MMU 116, respectively) as “translation lookaside
buffers.”
The examiner’s response to the declaration, in the penultimate page of the
Answer, consists of expressing the opinion that the declaration does not explain why
the Martens invention and the instant invention are thought to be different. Since the
examiner does not respond to the substance of the declaration (e.g., by clarifying
whether the assumption that something within MMU 114 and/or MMU 116 corresponds
to the claimed “translation array” is correct or incorrect) we are left to speculate, as are
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