Appeal No. 2000-2261
Application 08/730,670
to the analog FM circuitry 22. This rejection of claim 1 must be
reversed even though it appears to us that the artisan would
understand the teaching at column 1, lines 25-28 that there is a
bypass operation performed in the circuitry of Figure 1 of
Denheyer in accordance with the requirement at the end of claim 1
on appeal.
The examiner appears to rely upon inherency (Answer, page 4)
that the DSP 10 in Figure 1 of Denheyer would propagate the I and
Q signals according to the unlabeled bidirectional connection to
the analog FM circuitry 22 in the same manner it does so with
respect to the I and Q modulator 12. This is simply not
necessarily the case. Therefore, to sustain the examiner's
rejection, we would need to resort to speculation or unfounded
assumptions to supply the factual deficiencies in the record
before us. This we decline to do. Note the guidance provided by
In re Warner, 379 F.2d 1011, 1017, 154 USPQ 173, 178 (CCPA 1967),
cert. denied, 389 U.S. 1057 (1968), reh'g denied, 390 U.S. 1000
(1968). Here, simply put, more evidence is needed to convince
us. To the extent the examiner's position my be viewed as being
based upon inherency, inherency may not be established by
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