Appeal 2007-2016
Application 09/148,392
Once a prima facie case is established and rebuttal evidence is
submitted, the ultimate question becomes whether, based on the totality of
the record, the examiner carried his burden of proof by a preponderance.
See In re Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir.
1992). If the examiner fails to establish a prima facie case, the rejection is
improper and will be overturned. In re Fine, 837 F.2d 1071, 1074, 5
USPQ2d 1596, 1598 (Fed. Cir. 1988).
ANALYSIS
As described above, the portions of Jyu relied on by the Examiner,
actually require selecting an initial circuit to start with, which is different
from the claimed selecting initial design points on the parameter functions.
As argued by Appellant (Reply Br. 9), Jyu selects the entire circuit instead of
selecting design points on a parameter function (FF 3-4). We also disagree
with the Examiner that because Jyu relates to analyzing and improving the
design using power and delay as the constraining factors for the transistor
size (Suppl. Answer 17), the claimed subject matter is met. What is missing
from the Examiner’s analysis is a discussion of how these elements are used
in the design and how the constraint and optimization in Jyu is used in the
same way as in the claims.
Additionally, absent proper evidence to support the Examiner’s
position (Answer 17), we remain unconvinced that the technologies and
methodologies employed by Appellant are well known. Satisfying the initial
burden of presenting a prima facie case of anticipation requires more than
making conclusory statements that one of ordinary skill in the art would
have always designed the constraints and used a first sum of the constraint
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Last modified: September 9, 2013