Appeal No. 1998-0512
Application No. 08/477,238
arrive at the claimed invention. Uniroyal, Inc. v. Rudkin-
Wiley, 837 F.2d 1044, 1052, 5 USPQ2d 1434, 1438 (Fed. Cir.
1988), cert. denied, 488 U.S. 825 (1988). These showings by
the examiner are an essential part of complying with the
burden of presenting a prima facie case of obviousness. Note
In re Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444 (Fed.
Cir. 1992). Furthermore, "[t]hat knowledge can not come from
the applicant's invention itself." Oetiker, 977 F.2d at 1447,
24 USPQ2d at 1446.
We find no teaching or suggestion in Sato as to why one
of ordinary skill in the art would have been led to modify
Brownell to capacitively couple the conductive paths through a
solid dielectric material. In the Answer (pages 5-6), the
examiner asserts that
the prior art shows the general nature of how
reactive and inductive capacitance can be altered,
utilizing claimed techniques such as crossovers at
right angles, pathways with above and below board
traces.... [O]ne of ordinary skill in the art, given
those teachings, would recognize the advantages of
reduction in crosstalk commensurate with testing of
these known principles.
The examiner's reasoning seems to lack any basis in the prior
art, and appears to be no more than a statement that Brownell
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