Appeal No. 2001-2100
Application No. 08/833,302
by the prior art. In re Royka, 490 F.2d 981, 984-85, 180 USPQ
580, 582-83 (CCPA 1974). All words in a claim must be considered
in judging the patentability of that claim against the prior art.
In re Wilson, 424 F.2d 1382, 1385, 165 USPQ 494, 496 (CCPA 1970).
Further, although the Examiner asserts (Answer, page 6) that the
“loop back” language appears only in the claim preamble, we find
this to not be the case. Our review of the language of claim 1,
for example, reveals that the loop-back circuit is positively
recited as one of the elements included in the communication
control equipment along with a transmission system and a
receiving system.
We also recognize that the Examiner argues that, regardless
of whether the “loop back” language is considered a positive
recitation, “‘loop back’ is a well known technique for testing
and checking channels.” (Answer, page 6). We find, however, no
evidence forthcoming from the Examiner that would support such a
conclusion. 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
conclusion of obviousness. See In re Lee, 277 F.3d 1338, 1343,
61 USPQ2d 1430, 1433-34 (Fed. Cir. 2002).
-7–7
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