Appeal 2007-0833
Application 10/280,254
some articulated reasoning with some rational underpinning to support the
legal conclusion of obviousness.” Id., 127 S. Ct. at 1741, 82 USPQ2d at
1396 (quoting In re Kahn, 441 F.3d 977, 987, 78 USPQ2d 1329, 1336 (Fed.
Cir. 2006)). Such reasoning can be based on interrelated teachings of
multiple patents, the effects of demands known to the design community or
present in the marketplace, and the background knowledge possessed by a
person having ordinary skill in the art. KSR, 127 S. Ct. at 1740-41, 82
USPQ2d at 1396. Only if this initial burden is met does the burden of
coming forward with evidence or argument shift to the Appellant. Oetiker,
977 F.2d at 1445, 24 USPQ2d at 1444. See also Piasecki, 745 F.2d at 1472,
223 USPQ at 788. Thus, the Examiner 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
Examiner’s conclusion.
ANALYSIS
A. 35 U.S.C. § 102(b) REJECTION
As set forth above, representative claim 20 requires, upon detecting a
first external condition, a processing module of the handheld device retrieves
a first set of operational instructions for an extended memory mode to
transfer files between a host device and memory of the handheld device. As
detailed in the findings of fact section above, we have found that Kikinis
teaches that, upon the PDA being docked to the host, the microcontroller of
the PDA retrieves a bootstrap program to verify a host access code before
the host can subsequently transfer files between the PDA memory and the
host. (Finding of Fact 8.) We find that the PDA microcontroller disclosed
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