Appeal No. 1999-1638
Application No. 08/721,395
basis for the suggestion, nor any other factual finding offered as a foundation for the
suggestion. The Davis reference does not disclose that staggering the length of the
conductors, as shown in Figure 1, is for the purpose of decreasing crosstalk or other
electrical noise. We agree with appellants with respect to the lack of suggestion for
applying the staggered lengths of conductors in the disclosed stackable, gender changer
connector of Davis to a patch plug as disclosed by Baker.
The allocation of burdens requires that the USPTO produce the factual basis for its
rejection of an application under 35 U.S.C. § § 102 and 103. In re Piasecki, 745 F.2d
1468, 1472, 223 USPQ 785, 788 (Fed. Cir. 1984) (citing In re Warner, 379 F.2d 1011,
1016, 154 USPQ 173, 177 (CCPA 1967)). The one who bears the initial burden of
presenting a prima facie case of unpatentability is the examiner. In re Oetiker, 977 F.2d
1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir. 1992). Since the examiner has not
pointed out where the suggestion for the proposed combination lies, and we do not find
any suggestion for the combination in the evidence before us, the rejection appears to be
based on a hindsight reconstruction of appellants’ invention.
Each of independent claims 1, 7, and 13 contains limitations directed to conductors
having different lengths. Since it has not been shown that the subject matter as a whole of
any of the independent claims would have been obvious to the artisan, we do not sustain
the rejection of claims 1-15.
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