Appeal 2007-1754
Application 09/943,599
KSR, 127 S. Ct. at 1740, 82 USPQ2d at 1396. If the claimed subject matter
cannot be fairly characterized as involving the simple substitution of one
known element for another or the mere application of a known technique to
a piece of prior art ready for the improvement, a holding of obviousness can
be based on a showing that “there was an apparent reason to combine the
known elements in the fashion claimed.” Id. at 1740-41, 82 USPQ2d at
1396. Such a showing requires “some articulated reasoning with some
rational underpinning to support the legal conclusion of obviousness. . . .
[H]owever, the analysis need not seek out precise teachings directed to the
specific subject matter of the challenged claim, for a court can take account
of the inferences and creative steps that a person of ordinary skill in the art
would employ.” Id. at 1741, 82 USPQ2d at 1396 (quoting In re Kahn, 441
F.3d 977, 988, 78 USPQ2d 1329, 1336 (Fed. Cir. 2006)).
If the Examiner’s burden is met, the burden then shifts to the
Appellants to overcome the prima facie case with argument and/or evidence.
Obviousness is then determined on the basis of the evidence as a whole and
the relative persuasiveness of the arguments. See In re Oetiker, 977 F.2d
1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir. 1992).
Independent claims 13, 23, and 24 call for, in pertinent part, a
program counter identifier operable for expressing a corresponding program
counter value as an offset which indicates a number of program counter
values in the program counter trace stream by which the corresponding
program counter value is offset from the synchronization marker in the
program counter trace stream. Our previous discussion regarding the
shortcomings of Mann regarding this limitation applies equally here and we
9
Page: Previous 1 2 3 4 5 6 7 8 9 10 Next
Last modified: September 9, 2013