Appeal No. 2003-1505
Application No. 09/218,037
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). To reach a conclusion of
obviousness under § 103, the examiner must produce a factual
basis supported by teaching in a prior art reference or shown to
be common knowledge of unquestionable demonstration. Such
evidence is required in order to establish a prima facie case.
In re Piasecki, 745 F.2d 1468, 1471-72, 223 USPQ 785, 787-88
(Fed. Cir. 1984). The Examiner must not only identify the
elements in the prior art, but also show “some objective teaching
in the prior art or that knowledge generally available to one of
ordinary skill in the art would lead the individual to combine
the relevant teachings of the references.” In re Fine, 837 F.2d
1071, 1074, 5 USPQ2d 1596, 1598 (Fed. Cir. 1988).
Upon a review of the applied prior art, we disagree with the
Examiner that the disk scheduler 109 of Chen is the same as or
operates as the claimed host processor. What a reference teaches
is a question of fact. In re Baird, 16 F.3d 380, 382, 29 USPQ2d
1550, 1552 (Fed. Cir. 1994) (citing In re Beattie, 974 F.2d 1309,
1311, 24 USPQ2d 1040, 1041 (Fed. Cir. 1992)). Here the Examiner
ignores the claim requirement that the optimization be performed
by the host processor and not, by a disk controller. As pointed
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