Ex Parte COLE - Page 7




          Appeal No. 2000-1887                                                         
          Application No. 08/853,075                                                   


          arrive at the claimed invention.  See also In re Rouffet, 149                
          F.3d 1350, 1355, 47 USPQ2d 1453, 1456 (Fed. Cir. 1998).  Our                 
          reviewing court requires this evidence in order to establish a               
          prima facie case.  In re Piasecki, 745 F.2d 1468, 1471-72, 223               
          USPQ 785, 787-88 (Fed. Cir. 1984); In re Cofer, 354 F.2d 664,                
          668, 148 USPQ 268, 271-72 (CCPA 1966).                                       
               Additionally, the Federal Circuit further states that                   
          motivation, suggestion or teaching may come explicitly from                  
          statements in the prior art, the knowledge of one of ordinary                
          skill in the art, or, in some cases the nature of the problem to             
          be solved.  See In re Dembiczak, 175 F.3d 994, 999, 50 USPQ2d                
          1614, 1617 (Fed. Cir. 1999).  However, “the Board must not only              
          assure that the requisite findings are made, based on evidence of            
          record, but must also explain the reasoning by which the findings            
          are deemed to support the agency’s conclusion.”  In re Lee, 277              
          F.3d 1338, 1344, 61 USPQ2d 1430, 1434 (Fed. Cir. 2002).                      
               After reviewing Horna, we find that the reference generally             
          relates to an adaptive filter having a first shift register for              
          storing new samples while the old samples are read into a second             
          shift register for storing (col. 3, lines 46-55).  The adaptive              
          filter of Horna, as depicted in figure 4, includes first shift               
          registers 60a and 65a in unit 100 for storing the first samples              
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