Appeal No. 2002-0611
Application No. 09/234,229
describe a receiver antenna which extends along substantially the entire keyboard, as
depicted by element 18D in Figure 1 of the application.
Gersheneld, in fact, gives no indication, in the short description of Figure 8, at
column 8, lines 9-23, of the structure of receiver 22a. While the shape of receiver 22a
appears to be rectangular and in the center of the keyboard edge in Figure 8, it may be
elongated and extending across the entire keyboard. The point is, simply, that we do
not know from the disclosure of Gersheneld. Therefore, to find that receiver 22a is,
structurally, as claimed by appellants is to resort to speculation. Deficiencies in the
factual basis cannot be supplied by resorting to speculation or unsupported
generalizations. In re Freed, 425 F.2d 785, 787, 165 USPQ 570, 571 (CCPA 1970); In
re Warner, 379 F.2d 1011, 1017, 154 USPQ 173, 178 (CCPA 1967).
Moreover, the examiner’s rationale of claimed subject matter being “obvious
through experimentation” is in conflict with the case law that indicates that the fact
finder may not employ an “obvious to try” test for obviousness, within the meaning of 35
U.S.C. § 103. In re Fine, 837 F.2d 1071, 1075, 5 USPQ2d 1596, 1599 (Fed. Cir. 1988).
Also see In re Geiger, 815 F.2d 686, 688, 2 USPQ2d 1276, 1278 (Fed. Cir. 1987); In re
Goodwin, 576 F.2d 375, 377, 198 USPQ 1, 3 (CCPA 1978). Whether a particular
combination might be “obvious to try” is not a legitimate test of patentability.
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