Appeal No. 2001-0017
Application No. 09/040,479
Given the above deficiencies in the disclosures of the
applied prior art, we can find no teaching or suggestion, and the
Examiner has pointed to none, as to how and in what manner the
Shimizu and Andrews ‘340 references might be combined to arrive
at the claimed invention. The mere fact that the prior art may
be modified in the manner suggested by the Examiner does not make
the modification obvious unless the prior art suggested the
desirability of the modification. In re Fritch, 972 F.2d 1260,
1266 n.14, 23 USPQ2d 1780, 1783-84 n.14 (Fed. Cir. 1992).
It is also our view, that, even assuming, arguendo, that
proper motivation were established for modifying Shimizu with
Andrews ‘340, there is no indication as to how such modification
would address the particulars of the claim language of
independent claims 1, 10, 15, and 22, each of which requires an
impedance control pin which is similarly sized and shaped to a
plug signal pin. In order for us to sustain the Examiner’s
rejection under 35 U.S.C. § 103, we would need to resort to
speculation or unfounded assumptions or rationales to supply
deficiencies in the factual basis of the rejection before us. 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). Given the factual situation presented to us, it is our
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