Appeal No. 2006-3138
Application No. 09/683,351
We find that the Examiner is relying upon improper hindsight to reconstruct the
claimed invention. We find no teaching or suggestion in Mahurin or Isaman to make the
proposed combination as advanced by the Examiner. We find that the main point of
contention is that the read “operation” of Mahurin is an operation rather than an
instruction. We find that the Examiner discusses the teachings of Mahurin initially as an
“operation” and later states that Mahurin teaches a read “instruction” in the responsive
arguments:
xiii. The reduction and simplification of hardware would have provided
motivation to implement the read instruction of Mahurin in a separate
microinstruction inserted into the instruction stream by the MROM unit 34." Final
Office Action (6/8/05) (Emphasis added by Examiner to indicate a specific
example of an objective teaching in the prior art that was used as motivation
for the combination). [Answer, p. 31].
We find the Examiner’s rejection replete with statements such as, “can,” “could,”
and “would require.” While the Examiner may have a strong contention that the claimed
invention would have been obvious to one of ordinary skill in the relevant art at the time
of the invention, the Examiner bears the initial burden of persuasion for presenting a
prima facie case of obviousness. Here, we cannot find that the Examiner has set forth a
sufficiently clear case supported by a convincing line of reasoning for the analysis and
combination. Therefore, we cannot find that the Examiner has met the initial burden.
While we agree with the Examiner that Mahurin teaches the use of a read
operation and Isaman the use of inserting microinstructions, we cannot make the leap that
it would have been obvious to one of ordinary skill in the relevant art at the time of the
invention to identify a specific instruction which is disclosed as an operation and to then
combine it with a teaching of an instruction and insertion of a read instruction as the
Examiner seems to over simplify. While each individual step or modification that the
Examiner makes to the base teachings of Mahurin may seem to be not too great a leap,
we cannot agree with the totality of the Examiner’s modifications, analysis and
combination. Therefore, we cannot find that the Examiner has established a prima facie
case of obviousness of the invention as recited in independent claim 1 and dependent
claims 2-5 and 7.
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