Appeal No. 2001-1923
Application No. 09/031,356
As expressed, the examiner’s rejection of claims 26 and 27
based upon Genuit considered with Yoshida is defective on its
face because it appears to set forth only a concept-type
rejection: the claim language per se is not argued in any
manner. The rejection does not refer to identifiable teachings
and/or suggestions from each of the references relied upon. The
examiner’s approach appears to border on hindsight if not pure
hindsight, since specific teachings and suggestions of both
references have not been assessed on the record, thus leading us
to question the examiner’s basis of combinability. We must
independently assess, from an artisan’s prospective, teachings
and suggestions and inferences to be derived from the
respectively applied references and to do so prospectively to
determine if there is a proper basis (without prohibited
hindsight) to reject the noted claims on appeal within
35 U.S.C. § 103. The examiner has not expressed any rationale
or basis to replace the single microphone of Genuit with that of
Yoshida, just that the examiner considers that it would have
been obvious to have done so. The reasoning appears
presumptuous and not explained. The reasoning expressed in the
statement of the rejection at pages 4 and 5 of the answer, which
is substantially repeated in the responsive arguments portion of
the answer as to this rejection at pages 6 and 7 of the answer,
is couched in terms of the view that the modification “could”
have been made and not that it necessarily “would” have been
made by artisan within 35 U.S.C. § 103.
Essentially the same reasons for reversal exist for the
separate, first stated rejection of claim 28 in light of Suzuki
and Yoshida as expressed at page 5 of the answer. Again, the
responsive arguments portion of the answer merely repeats this
statement of the rejection at pages 7 and 8 of the answer.
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