Appeal No. 97-3453 Page 10
Application No. 08/475,374
The controlling question is simply whether the
differences, viz., namely the value of -25 dB and its
property, between the prior art and the appellants’ invention
as a whole are such that the invention would have been
obvious. The answer is no. The examiner has not shown that
the prior art as a whole recognized that the bit-error-rate
depends on the SHD. Recognition of this dependence is
essential to the obviousness of conducting experiments to
decide the value of the SHD that will offer an acceptable bit-
error-rate. Such dependence can be determined from data
representing bit-error-rate versus SHD as revealed by the
appellants. (Id., Fig. 3) The examiner has given us no basis
for the obviousness of the necessary experiments apart from
the appellants’ disclosure thereof.
For these reasons, the examiner failed to show that SHD
was recognized to be a result-effective variable. Therefore,
we find the examiner’s rejection does not amount to a prima
facie case of obviousness. Because the examiner has not
established a prima facie case, the rejection of claims 2, 11,
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