Appeal No. 2006-1690
Application No. 10/154,185
ERLE1 lowers while ERLE2 remains constantly above ERLE2 [sic], a channel
impulse response change is detected" [answer, page 19].
We will not sustain the examiner's rejection of claim 2. We disagree with
the examiner that Park discloses either expressly or inherently a channel impulse
response, let alone detecting a change in channel impulse response as claimed.
There is simply nothing in the record before us that supports the examiner's
assertion that Park discloses detecting a channel impulse response.
We now consider the examiner's rejection of claims 4-7, 13, 15, 16, and
24-26 under 35 U.S.C. § 103(a) as being unpatentable over the teachings of
Park in view of El Malki. In rejecting claims under 35 U.S.C. § 103, it is
incumbent upon the examiner to establish a factual basis to support the legal
conclusion of obviousness. See In re Fine, 837 F.2d 1071, 1073, 5 USPQ2d
1596, 1598 (Fed. Cir. 1988). In so doing, the examiner is expected to make the
factual determinations set forth in Graham v. John Deere Co., 383 U.S. 1, 17,
148 USPQ 459, 467 (1966), and to provide a reason why one having ordinary
skill in the pertinent art would have been led to modify the prior art or to combine
prior art references to arrive at the claimed invention. Such reason must stem
from some teaching, suggestion or implication in the prior art as a whole or
knowledge generally available to one having ordinary skill in the art. Uniroyal,
Inc. v. Rudkin-Wiley Corp., 837 F.2d 1044, 1051, 5 USPQ2d 1434, 1438 (Fed.
Cir. 1988), cert. denied, 488 U.S. 825 (1988); Ashland Oil, Inc. v. Delta Resins &
Refractories, Inc., 776 F.2d 281, 293, 227 USPQ 657, 664 (Fed. Cir. 1985), cert.
denied, 475 U.S. 1017 (1986); ACS Hosp. Sys., Inc. v. Montefiore Hosp., 732
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