Appeal No. 1997-1379 Application 08/194,748 electromagnetic radiation, radio waves, and non-electromagnetic radiation, such as light and sound waves. This provides motivation for substituting a light communication system for an electromagnetic communication system. However, in general, the rejection fails to set forth factual support for motivation. The Examiner states that the motivation may be based on knowledge generally available to those skilled in the art (EA7). This is true. However, the knowledge of those of ordinary skill in the art is normally demonstrated by a reference. See In re Kaplan, 789 F.2d 1574, 1580, 229 USPQ 678, 683 (Fed. Cir. 1986) ("Even if obviousness of the variation is predicated on the level of skill in the art, prior art evidence is needed to show what that level of skill was."). At a minimum, the Examiner is required to explain (i.e., make appropriate factual findings) as to what one skilled in the art would have known that would have provided the motivation. See In re Rouffet, 149 F.3d 1350, 1358, 47 USPQ2d 1453, 1459 (Fed. Cir. 1998) ("[E]ven when the level of skill in the art is high, the Board must identify specifically the principle, known to one of ordinary skill, - 12 -Page: Previous 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 NextLast modified: November 3, 2007