Appeal No. 2002-1531
Application No. 08/828,548
telephony by applying, in the exchange, a signal structure, suitable for telephony, to
speech signals intended for the computer.” Since the examiner has not established a
prima facie case of anticipation, we cannot sustain the examiner’s rejection of
independent claim 1 and its dependent claims 2-8. Similarly, we do find that the
examiner has not established a prima facie case of anticipation for independent claims
11 and 20, we cannot sustain the examiner’s rejection of independent claims 11 and 20
and dependent claims 12-17.
35 U.S.C. § 103
In determining novelty, the first inquiry must be into exactly what the claims
define. In re Wilder, 429 F.2d 447, 450, 166 USPQ 545, 548 (CCPA 1970). Similarly,
a Section 103 analysis begins with a key legal question -- what is the invention claimed?
Panduit Corp. v. Dennison Mfg. Co., 810 F.2d 1561, 1567, 1 USPQ2d 1593, 1597
(Fed. Cir. 1987).
"Deficiencies of the cited references cannot be remedied by the Board's general
conclusions about what is ‘basic knowledge' or ‘common sense.’” In re Zurko, 258 F.3d
1379, 1385, 59 USPQ2d 1693, 1697 (Fed. Cir. 2001). Furthermore, "the Board's
findings must extend to all material facts and must be documented on the record, lest
the ‘haze of so-called expertise' acquire insulation from accountability." In re Lee, 277
F.3d 1338, 1345, 61 USPQ2d 1430, 1435 (Fed. Cir. 2002). Here, we find the
Examiner's arguments to be supported merely by the Examiner's own expertise instead
5
Page: Previous 1 2 3 4 5 6 7 8 Next
Last modified: November 3, 2007