Appeal 2007-1415
Application 09/795,704
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., 127
S. Ct. 1727, 1741, 82 USPQ2d 1385, 1396 (2007) (quoting In re Kahn, 441
F.3d 977, 988, 78 USPQ2d 1329, 1336 (Fed. Cir. 2006)).
If the Examiner’s burden is met, the burden then shifts to the
Appellants to overcome the prima facie case with argument and/or evidence.
Obviousness is then determined on the basis of the evidence as a whole and
the relative persuasiveness of the arguments. See In re Oetiker, 977 F.2d
1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir. 1992).
Regarding independent claim 1, the Examiner's rejection essentially
finds that Rydbeck teaches a mobile phone with every claimed feature
except for a packet stack. The Examiner, however, cites Mazur as teaching
that it is well known to integrate both circuit and packet switching. In view
of this teaching, the Examiner concludes that it would have been obvious to
one of ordinary skill in the art at the time of the invention to include a packet
stack in Rydbeck’s system to include new communication protocols (Final
Rejection 2-3).
Appellants argue that Rydbeck does not disclose circuit and packet
stacks coupled to an RF transceiver as claimed. Appellants add that
4
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