Appeal No. 2002-1043
Application 08/784,860
Examiner misunderstands Mahany’s teaching. Appellants argue that
Mahany teaches that the mobile units have the capability of
transmitting at a higher data rate, but fails to teach that the
mobile units are able to receive at two different data rates.
See page 4 of Appellants’ brief and pages 2 and 3 of the brief.
Appellants argue that Mahany cannot properly be combined with
Serizawa. Appellants point out that Mahany’s teachings relate to
providing a higher rate of transmission capability in the mobile
terminal. Appellants’ invention as claimed requires providing a
control message at a second data rate, whereas the control
message specifies the first data rate for subsequent messages to
be received at the mobile terminal. Appellants argue that
nothing in Mahany that suggests such a control message and
certainly there is nothing in Serizawa or Mahany to suggest
modifying Serizawa to be provided with a control message as
claimed. See pages 3 and 4 of the reply brief.
In rejecting claims under 35 U.S.C. § 103, the Examiner
bears the initial burden of establishing a prima facie case of
obviousness. In re Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d 1443,
1444 (Fed. Cir. 1992). See also In re Piasecki, 745 F.2d 1468,
1472, 223 USPQ 785, 788 (Fed. Cir. 1984). The Examiner can
satisfy this burden by showing that some objective teaching in
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