Ex Parte GENTILE et al - Page 10




          Appeal No. 2002-2259                                                        
          Application No. 09/083,959                                                  


          claimed.  In re Kotzab, 217 F.3d 1365, 1369-70, 55 USPQ2d 1313,             
          1316-17 (Fed. Cir. 2000).                                                   
               In view of our analysis above, we find that the Examiner has           
          failed to set forth a prima facie case of obviousness with                  
          respect to claims 1, 4, 17, 26 and 32 because the necessary                 
          teachings and suggestions related to the claimed comparing the              
          types of current processors with a compatibility table and                  
          determining the types of the processors that are compatible with            
          all current processors are not shown.  Accordingly, we do not               
          sustain the 35 U.S.C. § 103 rejection of independent claims 1, 4,           
          17, 26 and 32, nor of claims 5-10, 12-14, 19-21, 23, 24, 27, 28,            
          30, 31 and 33 dependent thereon.                                            
               With respect to the rejection of claims 15, 16 and 25, the             
          Examiner further relies on Hamilton for teaching automatically              
          configuring home computers by an “autoconfiguration” server                 
          connected to the network home client computers via the Internet             
          (answer, page 7).  However, Hamilton does not overcome the                  
          deficiencies of the combination of the references as discussed              
          above as it fails to teach the claimed comparison of the types of           
          current processors with a compatibility table and determining the           
          types of the compatible processors.  Therefore, the 35 U.S.C.               
          § 103 rejection of claims 15, 16 and 25 cannot be sustained.                

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