Appeal No. 2002-1710 Page 12
Application No. 09/023,441
Here, claim 2 recites in pertinent part the following limitations: "overwriting said
single printer operating system with said operating system from the host computer. . . ."
The ordinary meaning of the term "overwrite" is "[t]o write into an area of storage,
thereby destroying the data previously stored in the same area." IBM Dictionary of
Computing 489 (10th ed. 1993). Giving the term its ordinary meaning, the limitations
require writing an operating system downloaded from a host computer into an area of
the printer, thereby destroying the operating system previously stored therein.
2. Obviousness Determination
"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, we disagree with the examiner's premise that Brown teaches overwriting
data in the memory of a printer. The passages cited by the examiner merely teach
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