Appeal No. 2001-1850 Page 6
Application No. 08/675,893
thorough and searching." McGinley v. Franklin Sports, Inc., 262 F.3d 1339, 1351-52,
60 USPQ2d 1001, 1008 (Fed. Cir. 2001). This factual question cannot "be resolved on
subjective belief and unknown authority," In re Lee, 277 F.3d 1338, 1343-44, 61
USPQ2d 1430, 1434 (Fed. Cir. 2002); "[i]t must be based on objective evidence of
record." Id. at 1343, 61 USPQ2d at 1434. Although couched concerning combining
prior art references, we hold the same requirements apply to modifying such
references.
Here, although Qualcomm evidences that "it would have been obvious to provide
channel coding and interleaving in Kato in order to conform to the proposed standards
for CDMA," (Final Rejection at 6-7), the examiner fails to show objective evidence of the
desirability of implementing the channel coding and interleaving as a plurality of
channel coders and interleavers rather than a single channel coder and interleaver.
Similarly, he fails to show objective evidence of the desirability of moving "the
separating circuit in Kato . . . [to a location] external from the base station. . . ." (Final
Rejection at 3.) His broad conclusions that such modifications would have been "an
obvious choice in design," (Final Rejection at 7), or "an obvious design choice,"
(Examiner's Answer at 6), "are not 'evidence.'" In re Dembiczak, 175 F.3d 994, 999, 50
USPQ2d 1614, 1617 (Fed. Cir. 1999)(citing McElmurry v. Arkansas Power & Light Co.,
995 F.2d 1576, 1578, 27 USPQ2d 1129, 1131 (Fed. Cir. 1993); In re Sichert, 566 F.2d
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