Ex parte TSURUMOTO et al. - Page 12




          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,                 

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