Appeal No. 1997-1379
Application 08/194,748
electromagnetic radiation, radio waves, and
non-electromagnetic radiation, such as light and sound waves.
This provides motivation for substituting a light
communication system for an electromagnetic communication
system. However, in general, the rejection fails to set forth
factual support for motivation.
The Examiner states that the motivation may be based on
knowledge generally available to those skilled in the art
(EA7). This is true. However, the knowledge of those of
ordinary skill in the art is normally demonstrated by a
reference. See In re Kaplan, 789 F.2d 1574, 1580,
229 USPQ 678, 683 (Fed. Cir. 1986) ("Even if obviousness of
the variation is predicated on the level of skill in the art,
prior art evidence is needed to show what that level of skill
was."). At a minimum, the Examiner is required to explain
(i.e., make appropriate factual findings) as to what one
skilled in the art would have known that would have provided
the motivation. See In re Rouffet, 149 F.3d 1350, 1358,
47 USPQ2d 1453, 1459 (Fed. Cir. 1998) ("[E]ven when the level
of skill in the art is high, the Board must identify
specifically the principle, known to one of ordinary skill,
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