Appeal No. 2004-0893
Application No. 09/124,310 Page 11
Rejection of claim 20 under 35 U.S.C. § 103(a)
Regarding the § 103(a) rejection of dependent claim 20 over
Itoh, the examiner asserts that Itoh teaches substantially all
that is claimed without identifying where in Itoh those teachings
exist. Also, the examiner (answer, page 6) takes Official Notice
that “it is common to have the electrical components of a
membrane switch fastened to the circuit board on a side facing
away from the membrane.” Based on that Official Notice the
examiner maintains that locating electrical components on a side
of the circuit board facing away from the membrane represents “an
obvious design expedient” (answer, page 6). However, as argued
by appellants, the examiner has not established how the proposed
modification of Itoh, even if such a modification would have been
obvious, would result in the claimed structure.
Accordingly, on this record, the rejection fails for lack of
a sufficient factual basis upon which to reach a conclusion of
obviousness. In re Fine, 837 F.2d 1071, 1073-74, 5 USPQ2d 1596,
1598 (Fed. Cir. 1988). It follows that we will not sustain the
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