Appeal No. 2002-1919 Page 8
Application No. 09/266,376
USPQ2d 1001, 1008 (Fed. Cir. 2001). The inquiry cannot "be resolved on subjective
belief and unknown authority," In re Lee, 277 F.3d 1338, 1343-44, 61 USPQ2d 1430,
1434 (Fed. Cir. 2002); "[i]t must be based on objective evidence of record." Id. at 1343,
61 USPQ2d at 1434. Although these requirements are couched in terms of combining
references, we hold the same requirements apply to modifying such a reference.
Here, the examiner fails to show objective evidence of the desirability of
operating Sengupta's "electronic component(s)," col. 3, l. 15, in a pulsed mode
comprising an on period and an off period. His broad conclusion that such a
modification would have been an "obvious design expedient[]," (Examiner's Answer
at 4), is "not 'evidence.'" In re Dembiczak, 175 F.3d 994, 999, 50 USPQ2d 1614, 1617
(Fed. Cir. 1999) (citing McElmurry v. Arkansas Power & Light Co., 995 F.2d 1576, 1578,
27 USPQ2d 1129, 1131 (Fed. Cir. 1993); In re Sichert, 566 F.2d 1154, 1164, 196 USPQ
209, 217 (CCPA 1977)).
In addition, contrary to the examiner's premise that a semiconductor operating in
a pulsed mode "do[es] not solve any stated problem," (Examiner's Answer at 4), the
appellants' specification discloses advantages to operating a device in "a time sharing
mode or pulse mode." (Spec. at 3.) Specifically, such a mode "allows several
communications systems to share the same frequency without interfering with each
other." (Id.) Furthermore, "[a] time sharing system can also lower over all power
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