Appeal No. 2002-2291
Application No. 09/196,117
antenna beams covering corresponding space areas, as disclosed by Newman, in order to achieve
the higher gain receive antennas and permit reliable reception of user signals at greater distances
and higher gain is also possible by use of narrow beam width antennas providing coverage of
only a portion of a sector” [answer-pages 3-4].
In rejecting claims under 35 U.S.C. 103, it is incumbent upon the examiner to establish a
factual basis to support the legal conclusion of obviousness. See In re Fine, 837 F.2d 1071,
1073, 5 USPQ2d 1596, 1598 (Fed. Cir. 1988). In so doing, the examiner is expected to make the
factual determinations set forth in Graham v, John Deere Co., 383 U.S. 1, 17, 148 USPQ 459,
467 (1966), and to provide a reason why one having ordinary skill in the pertinent art would have
been led to modify the prior art or to combine prior art references to arrive at the claimed
invention. Such reason much stem from some teachings, suggestions or implications in the prior
art as a whole or knowledge generally available to one having ordinary skill in the art. Uniroyal,
Inc. v. Rudkin-Wiley Corp., 837 F.2d 1044, 1051, 5 USPQ2d 1434, 1438 (Fed. Cir.), cert.
denied, 488 U.S. 825 (1988); Ashland Oil, Inc. v. Delta Resins & Refractories, Inc. , 776 F.2d
281, 293, 227 USPQ 657, 664 (Fed. Cir. 1985), cert. denied, 475 U.S. 1017 (1986); ACS Hosp.
Sys., Inc. v. Montefiore Hosp., 732 F.2d 1572, 1577, 221 USPQ 929, 933 (Fed. Cir. 1984).
These showings by the examiner are an essential part of complying with the burden of presenting
a prima facie case of obviousness. Note In re Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d 1443,
1444 (Fed. Cir. 1992). If that burden is met, the burden then shifts to the applicant to overcome
the prima facie case with argument and/or evidence. Obviousness is then determined on the
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