Appeal 2007-1115
Application 10/150,145
any express teaching of configuring and reconfiguring the base station.
Rather, we find that col. 5, lines 41-47, tends to suggest that the mobile unit
receives and processes each generation’s signals without configuring and
reconfiguring either base station. Therefore, we find that the Examiner has
not established the requisite initial showing of all the claimed elements.
Therefore, we cannot sustain the rejection of independent claims 2 and 5 and
their dependent claims 3, 4, 6, and 7.
35 U.S.C. § 103
With respect to the role of the Examiner as finder of fact, the Court of
Appeals for the Federal Circuit has stated: “the examiner bears the initial
burden, on review of the prior art or on any other ground, of presenting a
prima facie case of unpatentability.” In re Oetiker, 977 F.2d 1443, 1445, 24
USPQ2d 1443, 1444 (Fed. Cir. 1992). The Court of Appeals for the Federal
Circuit has also noted: “[w]hat the prior art teaches, whether it teaches away
from the claimed invention, and whether it motivates a combination of
teachings from different references are questions of fact.” In re Fulton, 391
F.3d 1195, 1199-1200, 73 USPQ2d 1141, 1144 (Fed. Cir. 2004) (internal
citations omitted). 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
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