Appeal 2007-1344
Application 10/045,789
control parameters may be selected directly from the code word without
algorithmic processing.
The Examiner has not set forth a reasonable explanation as to why he
believes that the scope of protection provided by claims 1-12 is not adequately
enabled by the description of the invention provided in the Specification. He thus
failed to meet his burden of setting forth a reasonable explanation of non-
enablement. Accordingly, we reverse the enablement rejection of claims 1-12.
OBVIOUSNESS
In rejecting claims under 35 U.S.C. § 103(a), the examiner bears the initial
burden of establishing a prima facie case of obviousness. In re Oetiker, 977 F.2d
1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir. 1992). See also In re Piasecki, 745
F.2d 1468, 1472, 223 USPQ 785, 788 (Fed. Cir. 1984). Only if this initial burden
is met does the burden of coming forward with evidence or argument shift to the
appellant. Id. at 1445, 24 USPQ2d at 1444. See also Piasecki, 745 F.2d at 1472,
223 USPQ at 788. Obviousness is then determined on the basis of the evidence as
a whole and the relative persuasiveness of the arguments. See Oetiker, 977 F.2d at
1445, 24 USPQ2d at 1444; Piasecki, 745 F.2d at 1472, 223 USPQ at 788.
It is incumbent upon the examiner to establish a factual basis to support the
legal conclusion of obviousness. In re Kahn, 441 F.3d 977, 988, 78 USPQ2d
1329, 1336 (Fed. Cir. 2006) (“[R]ejections on obviousness grounds cannot be
sustained by mere conclusory statements; instead, there must be some articulated
reasoning with some rational underpinning to support the legal conclusion of
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