Appeal No. 2001-1062
Application No. 08/910,297
We agree with appellants’ arguments. The same field of endeavor is merely the jumping-off
point in the determination of obviousness of the claimed invention. The examiner must still make a
prima facie case that it would have been obvious to the skilled artisan to select and combine the
teachings of the references. The establishment of such a case is weakened by the numerous
teachings in Lo that the polarized signals are not “constructively” combined but are combined to
reduce/cancel portions of the two signals (column 3, lines 15 through 44; column 4, lines 58 through
65; and column 5, lines 26 through 64). The examiner’s case is further weakened by the fact that Lo
is directed to a polarization diversity receiver whereas Iwasaki is directed to a frequency diversity1
receiver. The examiner has not come to grips with this major difference between the teachings of
Lo and Iwasaki. Besides, the examiner’s case is fatally weakened by the absence in the record of a
factual basis in the record (e.g., the references of record) for making the suggested modifications to
the teachings of Lo. A finding of motivation to combine the teachings of the references is essential
in an obviousness determination, and it must be “based on evidence of record,” and not the
examiner’s “subjective belief and unknown authority.” In re Lee, 277 F.3d 1338, 1343-1344, 61
1 But for the frequency diversity teachings of Iwasaki, it appears that the remainder of the
teachings of Iwasaki are remarkably similar to the structure and steps set forth in claims 1 and 10,
respectively. Figures 1 and 2 of Iwasaki disclose two antennas 10a and 10b with a phase detector
51 connected to receive signal inputs from both of the antennas, a variable phase shifter 52 to
adjust the phase of one of the antenna signal inputs, and a combiner/adder 53 to constructively
sum the two signal inputs. Such teachings are highlighted for review by both the examiner and
appellants.
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