Appeal No. 2001-2089
Application 08/993,368
some basis in fact. In the present factual situation, no
evidence is forthcoming from the Examiner that would indicate how
the stated motivation rationale, i.e., increased reliability and
reduction of manufacturing steps, would result from the
modification of Momodomi’s circuit structure with that of Komori.
The Examiner must not only make requisite findings, based on the
evidence of record, but must also explain the reasoning by which
the findings are deemed to support the asserted conclusion. See
In re Lee, 277 F.3d 1338, 1343, 61 USPQ2d 1430, 1433-34 (Fed.
Cir. 2002).
In view of the above discussion, it is our view that,
since all of the limitations of the appealed claims are not
taught or suggested by the applied prior art Momodomi and Komori
references, the Examiner has not established a prima facie case
of obviousness. Accordingly, the 35 U.S.C. § 103(a) rejection of
independent claim 17 and its dependent claims 18 and 20 is not
sustained.
Turning to a consideration of the Examiner’s 35 U.S.C.
§ 103(a) rejection of claims 12-16, 19, and 21 in which the Maiti
reference is added to the combination of Momodomi and Komori, we
do not sustain this rejection as well. Although the Examiner has
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