Ex Parte COULSON et al - Page 5



          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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