Appeal 2007-0803
Application 10/197,801
Pages 7 and 8 of the Reply Brief improperly make reference to
Hirano’s alleged failure to consider the problem solved by Appellants’
present invention. Notwithstanding the fact that representative independent
claim 1 on appeal does not recite a circuit which can increase on-current and
reduce off-current in an active state and further reduce the off-current in a
standby state, such problem-to-be-solved approach is not proper within a
rejection under 35 U.S.C. § 102.
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 must make the factual
determinations set forth in Graham v. John Deere Co., 383 U.S. 1, 17, 148
USPQ 459, 467 (1966). Furthermore, “‘there must be some articulated
reasoning with some rational underpinning to support the legal conclusion of
obviousness’ . . . . [H]owever, the analysis need not seek out precise
teachings directed to the specific subject matter of the challenged claim, for
a court can take account of the inferences and creative steps that a person of
ordinary skill in the art would employ.” KSR Int’l Co. v. Teleflex Inc., No.
04-1350, slip op. at 14 (U.S., Apr. 30, 2007)(quoting In re Kahn, 441 F.3d
977, 988 (Fed. Cir. 2006)). In this appeal, we are satisfied the examiner has
met the requirements of the recent precedent, as embellished upon here.
As to the rejection of claims 21 through 25 under 35 U.S.C § 103 as
being obvious over Mattison in view of Hirano, we are unpersuaded by the
corresponding arguments beginning at page 20 of the principal Brief on
appeal as to these claims. The arguments presented here do not contest the
proper combinability of these references within 35 U.S.C. § 103 to meet the
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