Appeal No. 2001-1189
Application No. 08/824,140
taught in Lyon, ‘to reduce leakage current and improve output
signal levels.’” A concluding argument made by appellant (brief,
page 19) is that:
Accordingly, . . . the Examiner cannot establish
obviousness by locating references which describe
various aspects of the patent Applicant’s invention
without also providing evidence of the motivating force
which would impel one skilled in the art to do what the
patent applicant has done. For the aforesaid reasons,
[t]he Applicant respectfully asserts that the rejection
of Claims 1, 2, 4-10, 12-18 and 20-27 is based on
classic hindsight reconstruction, and as evidenced
hereinabove, an artisan of ordinary skill, not having
the benefit of the Application as a “blueprint”, would
not be led to combine Lyon and D’Souza to make the
inventions of Claims 1, 2, 4-10, 12-18 and 20-27.
The record before us is silent as to all of the reasons
expressed by the examiner for combining the teachings of Lyon and
D’Souza. The factual question of motivation should be resolved
based on evidence of record, and not on the subjective belief and
unknown authority expressed by the examiner. In re Lee, 277 F.3d
1338, 1343-44, 61 USPQ2d 1430, 1434 (Fed. Cir. 2002). Thus, the
obviousness rejection of claims 1, 2, 4 through 10, 12 through 18
and 20 through 27 is reversed because we agree with appellant’s
arguments supra and the argument (brief, page 11; reply brief,
page 2) that the examiner has not made a prima facie showing of
obviousness.
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