Appeal No. 2005-0827
Application No. 09/903,239
“inherently” linear, and concludes that the use of a “passive resistor” will “improve
overall linearity of the amplifier.”
However, the rejection provides no evidence in support of the view that replacing
transistors in Zhang with “inherently linear” devices will improve operation of the
amplifier as asserted. Cf. In re Zurko, 258 F.3d 1379, 1386, 59 USPQ2d 1693, 1697
(Fed. Cir. 2001) (in a determination of unpatentability “the Board must point to some
concrete evidence in the record in support of...[the]...findings”). Moreover, the rejection
appears to rest on two conflicting views, neither of which are supported by the applied
references; i.e., a resistor is equivalent to, but at the same time preferred over, a
transistor.
We thus are in ultimate agreement with appellants. The instant rejection can
only be based on a hindsight reconstruction of the invention. The mere fact that the
prior art could be modified to result in the claimed invention would not have made the
modification obvious unless the prior art suggested the desirability of the modification.
See, e.g., In re Laskowski, 871 F.2d 115, 117, 10 USPQ2d 1397, 1398 (Fed. Cir. 1989).
Prior art references in combination do not make an invention obvious unless something
in the prior art would suggest the advantage to be derived from combining their
teachings. In re Sernaker, 702 F.2d 989, 995-96, 217 USPQ 1, 6-7 (Fed. Cir. 1983).
no excuse for not positively including the reference in the statement of rejection.”).
-4-
Page: Previous 1 2 3 4 5 6 Next
Last modified: November 3, 2007