Appeal No. 2002-2291
Application No. 09/196,117
basis of the evidence as a whole and the relative persuasiveness of the arguments. See Id.; In re
Hedges, 783 F.2d 1038, 1039, 228 USPQ 685, 686 (Fed. Cir. 1986); In re Piasecki, 745 F.2d
1468, 1472, 223 USPQ 785, 788 (Fed. Cir. 1984); and In re Rinehart, 531 F.2d 1048, 1052, 189
USPQ 143, 147 (CCPA 1976).
We will not sustain the examiner’s rejection of the claims because, in our view, the
examiner has failed to establish a prima facie case of obviousness. Even if everything the
examiner says about the references is true, the examiner has merely cited one reference for some
of the claimed subject matter, the second reference for the remainder of the claimed subject
matter and concluded, in essence, that since both references, together, show all of the claimed
subject matter, it would have been obvious to combine them. There needs to be some reason,
established by the prior art or common knowledge of artisans, for modifying the references in
order to arrive at the claimed subject matter. The examiner states this reason to be “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.”
We are unpersuaded. The examiner does not indicate where the prior art suggests that
these advantages of “higher gain” and “reliable reception...at greater distances” would be
achieved by combining Reudink and Newman.
5
Page: Previous 1 2 3 4 5 6 7 8 9 10 Next
Last modified: November 3, 2007