Appeal No. 2002-1672
Application No. 09/412,124
denied, 475 U.S. 1017 (1986); ACS Hospital Systems, Inc. v.
Montefiore Hospital, 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).
Initially, the Examiner has combined Nakano with Baird in an
obviousness rejection of claims 1, 2, 4, 5, 12, 17, 19, 20, and
22. In making this rejection (Answer, page 10), the Examiner has
relied on Baird to provide a teaching of applying acquired trace
instructions externally from a processor, a feature not
explicitly disclosed in Nakano.
After reviewing Appellants’ arguments in response, we are in
ultimate agreement with Appellants that the Examiner has not
established a prima facie case of obviousness. Although we do
not agree with Appellants that the “exceptional event” in Nakano
which triggers a failure recovery procedure can not be considered
a triggering event, as discussed in more detail infra, we do
agree with Appellants (Reply Brief, page 4) that Nakano acquires
address information and not instructions as claimed.
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