Appeal No. 2003-1631
Application No. 09/451,332
the same as the claimed association steps related to the second
and the third transmissions (answer, pages 11 & 12).
In rejecting claims under 35 U.S.C. § 103, the Examiner
bears the initial burden of presenting a prima facie case of
obviousness. See In re Rijckaert, 9 F.3d 1531, 1532, 28 USPQ2d
1955, 1956 (Fed. Cir. 1993). Furthermore, for an invention to be
obvious in view of a combination of references, there must be
some suggestion, motivation, or teaching in the prior art that
would have led a person of ordinary skill in the art to select
the references and combine them in the way that would produce the
claimed invention. Karsten Mfg. Corp. v. Cleveland Gulf Co., 242
F.3d 1376, 1385, 58 USPQ2d 1286, 1293 (Fed. Cir. 2001). Even
when obviousness is based on a single prior art reference, there
must be a showing of a suggestion or motivation to modify the
teachings of that reference. In re Kotzab, 217 F.3d 1365, 1370,
55 USPQ2d 1313, 1316-17 (Fed. Cir. 2000), citing B.F. Goodrich
Co. v. Aircraft Breaking Sys. Corp., 72 F.3d 1577, 1582, 37
USPQ2d 1314, 1318 (Fed. Cir. 1996). The Examiner must also
produce a factual basis supported by a teaching in a prior art
reference or shown to be common knowledge of unquestionable
demonstration, consistent with the holding in Graham v. John
Deere Co., 383 U.S. 1 (1966). However, “the Board must not only
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