Appeal No. 2001-1304
Application No. 09/061,392
Obviousness is a question of law based on findings of underlying facts. See
Graham v. John Deere Co., 383 U.S. 1, 17-18, 148 USPQ 459, 467 (1966). The
allocation of burdens requires that the USPTO produce the factual basis for its rejection
of an application under 35 U.S.C. § § 102 and 103. In re Piasecki, 745 F.2d 1468,
1472, 223 USPQ 785, 788 (Fed. Cir. 1984) (citing In re Warner, 379 F.2d 1011, 1016,
154 USPQ 173, 177 (CCPA 1967)). The one who bears the initial burden of presenting
a prima facie case of unpatentability is the examiner. In re Oetiker, 977 F.2d 1443,
1445, 24 USPQ2d 1443, 1444 (Fed. Cir. 1992).
The examiner has pointed to nothing in the references in support of the
submitted reasons with respect to why the artisan would have been led to apply the
teachings of Saari to one vertical monopole of the antenna disclosed by Goodman, but
not to another. One reason for the rule that the USPTO must provide evidence in
support of findings necessary to establish a case for prima facie obviousness is to
ensure that an improper hindsight reconstruction of the invention has been avoided.
Moreover, we must be able to point to concrete evidence in the record, rather than
speculate as to what “could” be done, to show obviousness of claimed subject matter.
See In re Zurko, 258 F.3d 1379, 1386, 59 USPQ2d 1693, 1697 (Fed. Cir. 2001) (in a
determination of unpatentability “the Board must point to some concrete evidence in the
record in support of...[the]...findings”).
Each of the remaining independent claims (i.e., 10 and 14) requires a
substantially vertical monopole element having a substantially constant outer diameter,
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