Appeal No. 2006-0496
Application No. 10/126,569
“criticality,” or an alleged failure to “distinguish the novelty” of the claimed waveform
signals, represents an improper standard for showing prima facie obviousness.
When obviousness is based on a particular prior art reference, there must be a
showing of a suggestion or motivation to modify the teachings of that reference.
B.F. Goodrich Co. v. Aircraft Braking Sys. Corp., 72 F.3d 1577, 1582, 37 USPQ2d
1314, 1318 (Fed. Cir. 1996). The rejection of claims 5-11, 17-23, and 38-41 improperly
places the burden on appellants, without establishing an initial case for prima facie
obviousness. Moreover, with respect to claims 38 through 41, we have not sustained
the rejection of base claim 24 or 27. Claim 34 incorporates the limitations of claim 33.
We have not sustained the rejection of claim 33.
We thus do not sustain the § 103 rejection of claims 5-11, 17-23, 34, and 38-41
over Newton.
CONCLUSION
The rejection of claims 1-41 is affirmed with respect to claims 1-4 and 12-16, but
reversed with respect to claims 5-11 and 17-41. The examiner’s decision is thus
affirmed-in-part.
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