Appeal No. 2003-1473
Application No. 09/336,649
connection and establishing a conductive path for the signal
(brief, page 5).
In response, the Examiner argues that the claims do not
recite the features that may be present in the definition of
“repeater” (answer, page 7). The Examiner further asserts that
the SCSI bus switches J-M of IBM TDB and the SCSI duplex-ready
logic 42 of Pascarella are indeed repeaters because they repeat
the signals of the first SCSI host (answer, page 8).
In rejecting claims under 35 U.S.C. § 103, the Examiner
bears the initial burden of presenting a prima facie case of
obviousness. See In re Rijckaert, 9 F.3d 1531, 1532, 28 USPQ2d
1955, 1956 (Fed. Cir. 1993). In considering the question of the
obviousness of the claimed invention in view of the prior art
relied upon, the Examiner is expected to make the factual
determination set forth in Graham v. John Deere Co., 383 U.S. 1,
17, 148 USPQ 459, 467 (1966), and to provide a reason why one
having ordinary skill in the pertinent art would have been led to
modify the prior art or to combine prior art references to arrive
at the claimed invention. See also In re Rouffet, 149 F.3d 1350,
1355, 47 USPQ2d 1453, 1456 (Fed. Cir. 1998). Such evidence is
required in order to establish a prima facie case. In re
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