Appeal No. 2006-0889
Application No. 10/174,918
In rejecting claims under 35 U.S.C. § 103, the Examiner bears the initial burden of
establishing a prima facie case of obviousness. In re Oetiker, 977 F.2d 1443, 1445, 24
USPQ2d 1443, 1444 (Fed. Cir. 1992). See also In re Piasecki, 745 F.2d 1468, 1472, 223
USPQ 785, 788 (Fed. Cir. 1984). The Examiner can satisfy this burden by showing that
some objective teaching in the prior art or knowledge generally available to one of ordinary
skill in the art suggests the claimed subject matter. In re Fine, 837 F.2d 1071, 1074, 5
USPQ2d 1596, 1598 (Fed. Cir. 1988). Only if this initial burden is met does the burden of
coming forward with evidence or argument shift to the Appellants. Oetiker, 977 F.2d at
1445, 24 USPQ2d at 1444. See also Piasecki, 745 F.2d at 1472, 223 USPQ at 788.
An obviousness analysis commences with a review and consideration of all the
pertinent evidence and arguments. “In reviewing the [E]xaminer’s decision on appeal, the
Board must necessarily weigh all of the evidence and argument.” Oetiker, 977 F.2d at 1445,
24 USPQ2d at 1444. “[T]he Board must not only assure that the requisite findings are made,
based on evidence of record, but must also explain the reasoning by which the findings are
deemed to support the agency’s conclusion.” In re Lee, 277 F.3d 1338, 1344, 61 USPQ2d
1430, 1434 (Fed. Cir. 2002).
With respect to independent claim 1, Appellants argue at page 7 of the brief, “the
prior art fails to show ‘an arbiter circuit coupled to both the microprocessor system and the
decoded for controlling the access to said main memory by the decoder and the
microprocessor.’” We agree. The Examiner takes the position in the rejection (page 4 of the
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