Appeal No. 2006-1204
Application No. 10/379,006
forward with evidence or argument shift to the Appellants.
Oetiker, 977 F.2d at 1445, 24 USPQ2d at 1444. See also Piasecki,
745 F.2d at 1472, 223 USPQ at 788.
An obviousness analysis commences with a review and
consideration of all the pertinent evidence and arguments. “In
reviewing the [E]xaminer’s decision on appeal, the Board must
necessarily weigh all of the evidence and argument.” Oetiker,
977 F.2d at 1445, 24 USPQ2d at 1444. “[T]he Board must not only
assure that the requisite findings are made, based on evidence of
record, but must also explain the reasoning by which the findings
are deemed to support the agency’s conclusion.” In re Lee, 277
F.3d 1338, 1344, 61 USPQ2d 1430, 1434 (Fed. Cir. 2002).
With respect to dependent claims 40 and 45, Appellants argue
at page 9 of the Appeal Brief that Mooney does not disclose a
synchronous circuit as defined in the present application, nor
does it teach the selection of an impedance from the driver
circuit. Appellants further argue that Mooney provides no
evidence of a motivation to modify the prior art to yield
Appellants’ claimed invention.
In order for us to decide the question of obviousness,
“[t]he first inquiry must be into exactly what the claims
define.” In re Wilder, 429 F.2d 447, 450, 166 USPQ 545, 548 (CCPA
1970). “Analysis begins with a key legal question-- what is the
invention claimed ?”...Claim interpretation...will normally
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