Appeal No. 2004-1596
Application No. 09/544,858
Fine, 837 F.2d 1071, 1074, 5 USPQ2d 1596, 1598 (Fed. Cir. 1988).
Furthermore, the Examiner must produce a factual basis supported
by 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). Such
evidence is required in order to establish a prima facie case.
In re Piasecki, 745 F.2d 1468, 1471-72, 223 USPQ 785, 787-88
(Fed. Cir. 1984); In re Cofer, 354 F.2d 664, 668, 148 USPQ 268,
271-72 (CCPA 1966).
With respect to the rejection of claims 1-16, 23-25, 27-34
and 37-39 over AAPA and Kowalski, Appellant acknowledges the
Examiner’s characterization of the protocol determined by the
selection circuit on the PC card of Kowalski using an initial
phase dialog as the first signal and the decoded subsequent data
as the second signal (brief, page 10). However, Appellant argues
that modifying any features of the disclosed card-reader system
so that it may be incorporated in a legacy computer system, as
proposed by the examiner, is not supported by any motivation or
suggestion in the prior art (brief, page 11). Appellant asserts
that the combination would not have resulted in the claimed
ignoring the first signal and decoding the second signal since
Kowalski requires that the third signal read the initial phase
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