Ex Parte MILLS et al - Page 5



          Appeal No. 1999-2614                                                        
          Application No. 08/667,826                                                  

               With respect to each of independent claims 1, 8, and 16, the           
          Examiner, as the basis for the obviousness rejection, proposes to           
          modify the graphics controller system of Grunewald.  According to           
          the Examiner, Grunewald discloses the claimed invention except              
          for the failure “ . . . to explicitly teach at least one of                 
          plurality of instructions comprising a set register instruction             
          and at least another of the plurality of instructions being an              
          execute instruction.”  (Answer, page 3).  To address this                   
          deficiency, the Examiner turns to Sone which, in the Examiner’s             
          view, discloses the claimed set register and execute                        
          instructions.  The Examiner’s stated position (id. at 4) suggests           
          the obviousness to the skilled artisan of applying the set                  
          register and execution instruction teachings of Sone to the                 
          graphic controller system of Grunewald in order to achieve high             
          resolution color graphic images.                                            
               In response, Appellants assert that the Examiner has not               
          established a prima facie case of obviousness since all of the              
          limitations of the appealed claims are not taught or suggested by           
          the applied Grunewald and Sone references.  After careful review            
          of the applied prior art references in light of the arguments of            
          record, we are in agreement with Appellants’ position as stated             
          in the Brief.  As argued by Appellants (Brief, pages 8 and 9),              
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