Appeal No. 2001-1185
Application No. 08/915,597 Page 10
evidence in the record. The examiner may not resort to
speculation or unfounded assumptions to supply deficiencies in
establishing a factual basis. See In re Warner, 379 F.2d 1011,
1017, 154 USPQ 173, 178 (CCPA 1967). Stated differently, the
subjective opinion of the examiner as to what is or is not
obvious, without evidence in support thereof, does not provide a
factual basis upon which the legal conclusion of obviousness can
be reached.
Because we agree with appellants that Sowles does not teach
or suggest that the home SIM pass messages to and from the
alternative earth station while acting as the gateway into the
terrestrial communication system as required by claim 1, and
additionally find that Hatano does not make up for the basic
deficiencies of Sowles, we do not reach the additional arguments
presented by appellants. The other independent claim 8 contains
limitations similar to claim 1.
From all of the above, we find that the examiner has failed
to establish a prima facie case of obviousness. The rejection of
claims 1, 3, 4, 6, 8, 10, 11, and 13 under 35 U.S.C. § 103(a) is
therefore reversed.
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