Appeal No. 2006-1458
Application No. 10/040,395
does not make the modification obvious unless the prior art
suggested the desirability of the modification. In re Fritch,
972 F. 2d 1260, 1266, 23 USPQ2d 1780, 1783-84 (Fed. Cir. 1992).
We recognize that the Examiner has expanded upon the “good
channel modulation sensitivity” rationale for the proposed
combination of Chiang and Litwin at pages 12 and 13 in the
responsive arguments portion of the Answer. We find the
Examiner’s comments, however, to be totally devoid of any
evidentiary support on the record. It does not matter how strong
the Examiner’s convictions are that the claimed invention would
have been obvious, or whether we might have an intuitive belief
that the claimed invention would have been obvious within the
meaning of 35 U.S.C. § 103. Neither circumstance is a substitute
for evidence lacking in the record before us.
It is well settled that “the Board cannot simply reach
conclusions based on it own understanding or experience - or on
its assessment of what would be basic knowledge or common sense.
Rather, the Board must point to some concrete evidence in the
record in support of these findings.” In re Zurko, 258 F.3d
1379, 1386, 59 USPQ2d 1693, 1697 (Fed. Cir. 2001). See also In
re Lee, 277 F.3d 1338, 1344-45, 61 USPQ2d 1430, 1434-35 (Fed.
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