Appeal No. 1998-0512 Application No. 08/477,238 arrive at the claimed invention. Uniroyal, Inc. v. Rudkin- Wiley, 837 F.2d 1044, 1052, 5 USPQ2d 1434, 1438 (Fed. Cir. 1988), cert. denied, 488 U.S. 825 (1988). These showings by the examiner are an essential part of complying with the burden of presenting a prima facie case of obviousness. Note In re Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir. 1992). Furthermore, "[t]hat knowledge can not come from the applicant's invention itself." Oetiker, 977 F.2d at 1447, 24 USPQ2d at 1446. We find no teaching or suggestion in Sato as to why one of ordinary skill in the art would have been led to modify Brownell to capacitively couple the conductive paths through a solid dielectric material. In the Answer (pages 5-6), the examiner asserts that the prior art shows the general nature of how reactive and inductive capacitance can be altered, utilizing claimed techniques such as crossovers at right angles, pathways with above and below board traces.... [O]ne of ordinary skill in the art, given those teachings, would recognize the advantages of reduction in crosstalk commensurate with testing of these known principles. The examiner's reasoning seems to lack any basis in the prior art, and appears to be no more than a statement that Brownell 6Page: Previous 1 2 3 4 5 6 7 8 9 NextLast modified: November 3, 2007