Appeal No. 2001-2100
Application No. 08/833,302
(1988); Ashland Oil, Inc. v. Delta Resins & Refractories, Inc.,
776 F.2d 281, 293, 227 USPQ 657, 664 (Fed. Cir. 1985), cert.
denied, 475 U.S. 1017 (1986); ACS Hosp. Sys., Inc. v.
Montefiore Hosp., 732 F.2d 1572, 1577, 221 USPQ 929, 933 (Fed.
Cir. 1984). These showings by the Examiner are an essential part
of complying with the burden of presenting a prima facie case of
obviousness. Note In re Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d
1443, 1444 (Fed. Cir. 1992).
With respect to the Examiner’s 35 U.S.C. § 103(a) rejection
of independent claims 1, 3, 6, and 7 based on the proposed
combination of Yoshimura and Takizawa, Appellant asserts that the
Examiner has failed to establish a prima facie case of
obviousness since all of the limitations of claims 1, 3, 6, and 7
are not taught or suggested by the applied prior art references,
either separately or in combination. At pages 11-13 of the
Brief, Appellant’s arguments focus on the contention that neither
Yoshimura nor Takizawa disclose the particular claimed protocol
for selecting among data cells, idle cells, and test cells.
After careful review of the applied Yoshimura and Takizawa
references, in light of the arguments of record, we are in
general agreement with Appellant’s position as stated in the
Briefs. We note that independent claim 1 sets forth the three
-5–5
Page: Previous 1 2 3 4 5 6 7 8 9 10 Next
Last modified: November 3, 2007