Appeal No. 2005-0713
Application No. 10/153,719 Page 9
III. § 103(a) rejection of claims 1-3, 5, and 11-12 over Nakano
in view of Nguyen and the 35 U.S.C. § 103(a) rejection of claim 4
over Nakano and Nguyen in view of Singh.
The examiner has found (answer, page 6) that Nakano teaches
all of the representative claim 1 elements except the matching
network having the claimed “decoupling capacitor.” To remedy this
deficiency, the examiner relies on Nguyen to teach a matching
network that includes a decoupling capacitor and concludes that it
would have been obvious to modify Nakano to use a decoupling
capacitor in order to minimize the reflected power. Id. In
rejecting claims under 35 U.S.C. § 103, the Examiner bears the
initial burden of establishing a prima facie case of obviousness.
In re Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444 (Fed.
Cir. 1992). See also In re Piasecki, 745 F.2d 1468, 1472, 223
USPQ 785, 788 (Fed. Cir. 1984). In order to satisfy this burden,
the examiner must show that some objective teaching in the prior
art or knowledge generally available to one of ordinary skill in
the art suggests the claimed subject matter. In re Fine, 837 F.2d
1071, 1074, 5 USPQ2d 1596, 1598 (Fed. Cir. 1988). Appellant
argues (brief, pp. 10 and 11) that the examiner has not
established the requisite motivation to combine Nakano with
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