Docket No. 2013-1622
WALLACH, SCHALL, HUGHES
April 23, 2014
Brief Summary: Board decision vacated-in-part as it “‘cannot simply reach conclusions based on its own understanding or experiments-or on its assessment of what would be basic knowledge or common sense” but must “[i]nstead…point to some concrete evidence in the record in support of these findings”.
Summary: Mr. Wallen appealed rejection of the claims of US 10/991,878 relating to wireless communication networks as obvious. The Examiner rejected all of the claims as obvious in view of several prior art references and the Board affirmed those rejections. A request for a rehearing regarding the rejection of two claims was denied. In this appeal, the Board’s decision was affirmed without much analysis for all but those two claims (“Based upon our review of the record, we agree that the findings with respect to claims 1, 2, 5, 12-14, 25 and 26 are supported by substantial evidence.”) Mr. Wallen argued that a prior art reference included in the rejection of claims 6 and 29 “does not disclose anything relating to the ‘propagation channel estimates’ limitation”. The FC panel found that the Examiner’s Answer in the appeal to the Board did not address this argument and neither did the Board in its decision (“the Board stated-without citing any record evidence or any of the Examiner’s prior findings-that the invention disclosed in the [prior art] ‘can be equally applied to any transmission or reception media.’…it made only a conclusory statement without citing to any record evidence supporting the finding.”) The opinion explains that “[w]hen the Board makes ‘core factualy findings in a determination of patentability’, it ‘cannot simply reach conclusions based on its own understanding or experiments-or on its assessment of what would be basic knowledge or common sense” but must “[i]nstead…point to some concrete evidence in the record in support of these findings” (citing In re Zurko, FC 2001). Thus, the decision was affirmed-in-part, vacated-in-part (claims 6 and 29) and remanded so the Board “can consider whether the evidence is sufficient”.