Appeal No. 2002-1395 Page 16
Application No. 08/789,702
As explained regarding the anticipation rejection, claims 1 requires defining part
of a circuit and incorporating a reference to the definition into a description of the circuit.
Claims 17 and 39, the other independent claims, specify similar limitations.
Having determined what subject matter is being claimed, the next inquiry is
whether the subject matter would have been 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 . . . have suggested the claimed subject matter
to a person of ordinary skill in the art.'" In re Bell, 991 F.2d 781, 783, 26 USPQ2d 1529,
1531 (Fed. Cir. 1993) (quoting In re Rinehart, 531 F.2d 1048, 1051, 189 USPQ 143,
147 (CCPA 1976)).
Here, the examiner does not allege, let alone show, that teachings from Rostoker
and Van Dyke would have suggested defining part of a circuit and incorporating a
reference to the definition into a description of the circuit. We will not resort to
speculation as to such a possible suggestion. Therefore, we reverse the obviousness
rejection of claim 1; of claims 2-16, which depend therefrom; of claim 17; of claims 18-
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