Ex Parte Leete

Board of Patent Appeals and Interferences

Jul 27, 2006

09730238 (B.P.A.I. Jul. 27, 2006)

The opinion in support of the decision being entered today was not written for
publication and is not binding precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
_______________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_______________

Ex Parte BRIAN A. LEETE
_______________

Appeal No. 2005-2753
Application No. 09/730,238
_______________

ON BRIEF
_______________

Before FLEMING, Chief Administrative Patent Judge, HARKCOM, Vice Chief
Administrative Patent Judge, KRASS, JERRY SMITH and BARRETT, Administrative
Patent Judges.

KRASS, Administrative Patent Judge.

ON REQUEST FOR REHEARING

Appellant requests rehearing and reconsideration of our decision of November 22,
2005, wherein we affirmed the examiner’s decision rejecting claims 1-23 and 26-48 under
35 U.S.C. §103.
In addition, appellant requests an expanded panel for rehearing in accordance with
Standard Operating Procedure 1 (Revision 12) based on an allegation of our Decision raising
two issues of “exceptional importance.”

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The first alleged exceptional issue of importance is that our opinion did not discuss or
distinguish the Federal Circuit cases cited by appellant, but, instead, cited other, many older,
Federal Circuit cases than those cited by appellant.
The second alleged exceptional issue of importance is that our decision did not
discuss or support the element of a reasonable expectation of success as an important element
of a prima facie case of obviousness.
While we do not necessarily agree that these are “exceptional” issues of importance,
we grant appellant’s request for an expanded panel to elucidate on our reasoning.
Appellant requests rehearing of all thirteen grounds of rejection. These grounds of
rejection are listed at page 3 of our decision of November 22, 2005, and are also listed on
pages 8-9 of the principal brief of March 11, 2005.
In particular, appellant asserts that our opinion overlooked or misapprehended the
following four points:
A. Our opinion did not address the Federal Circuit cases cited by appellant of In re
Zurko, 258 F.3d 1379, 59 USPQ2d 1693 (Fed. Cir. 2001); In re Vaeck, 947 F.2d 488, 20
USPQ2d 1438 (Fed. Cir. 1991); In re Lee, 277 F.3d 1338, 61 USPQ2d 1430 (Fed. Cir. 2002);
In re Dembiczak, 175 F.3d 994, 50 USPQ2d 1614 (Fed. Cir. 1999); In re Rouffet, 149 F.3d
1350, 47 USPQ2d 1453 (Fed. Cir. 1998); and In re Kotzab, 217 F. 3d 1365, 55 USPQ2d
1313 (Fed. Cir. 2000) but provides another list of cases to support our analysis, with all but
one of those listed cases older than the cases cited by appellant.

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B. Our opinion did not discuss appellant’s argument that the rejections did not cite
evidence of a reasonable expectation of success and that this is a relevant factor in
determining whether a prima facie case of obviousness has been established.
C. While there are thirteen different grounds of rejection to be reviewed on appeal,
our opinion addressed only the first six grounds separately, dismissing the last seven grounds
in a single paragraph. Appellant asserts that since the brief referred to each separate ground
of rejection, so must our opinion.
D. Our opinion misapprehended appellant’s argument that there is no clear and
particular evidence of a suggestion or motivation to form the proposed combinations of
references.
We will respond to these four points in the order listed by appellant. Points A and B
correspond to the two issues which appellant submits to be issues of exceptional importance
justifying review by an expanded panel.
A.
An allegation that certain cited Federal Circuit cases are newer than others does not
refute the viability of the cases cited in our decision. We note that appellant does not assert
that any of the decisions in the cases cited in our opinion have been overruled or that we have
cited case law that does not apply.

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Appellant’s brief summarized the applicable law as follows (brief, pages 10-11):

A Federal Circuit opinion states that the suggestion or motivation to combine
references and the reasonable expectation of success must both be found in the prior
art. [Footnote 3 citing MPEP § 2143 and In re Vaeck omitted.]

Multiple Federal Circuit decisions emphasize the need for the PTO to furnish
evidence in support of claim rejections. For example, the Federal Circuit addressed
citation of “basic knowledge or common sense” in rejections in In re Zurko:

“With respect to core factual findings in a determination of patentability,
however, the Board [Board of Patent Appeals and Interferences] cannot
simply reach conclusions based on its own understanding or experience – or
on its assessment of what would be basic knowledge or common sense.
Rather, the Board must point to some concrete evidence in the record in
support of these findings.” [Footnote 4 to Zurko omitted.]

The Federal Circuit has particularly emphasized the need for the PTO to
furnish evidence in support of claim rejections under 35 U.S.C. § 103 in In re Lee:

“When patentability turns on the question of obviousness, the search for and
analysis of the prior art includes evidence relevant to the finding of whether
there is a teaching, motivation, or suggestion to select and combine the
references relied on as evidence of obviousness…..The factual inquiry
whether to combine references must be thorough and searching…..It must be
based on objective evidence of record.” [Footnote 5 to In re Lee omitted.]

The Federal Circuit stated that the “need for specificity pervades this
authority” requiring a teaching, motivation, or suggestion to select and combine
references. [Footnote 6 to In re Lee omitted.] The Federal Circuit has expressed this
need for specificity in several cases:

“[T]he best defense against the subtle but powerful attraction of a hindsight-
based obviousness analysis is rigorous application of the requirement for a
showing of the teaching or motivation to combine prior art references…..the
showing must be clear and particular.” [Footnote 7 to In re Dembiczak
omitted.]

“[E]ven when the level of skill in the art is high, the Board must identify
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specifically the principle, known to one of ordinary skill, that suggests the
claimed combination.” [Footnote 8 to In re Rouffet omitted.]

“[P]articular findings must be made as to the reason the skilled artisan, with
no knowledge of the claimed invention, would have selected these
components for combination in the manner claimed.” [Footnote 9 to In re
Kotzab omitted.]

Appellant then generally argued that the “final Office Action has not cited clear and
particular evidence of record in support of a [or ‘this’] motivation to modify Herwig [and one
or more of the secondary references] as is required by In re Dembiczak and In re Lee”
(principal brief-pages 12, 14 (2 places), 15, and 16-17; similar language pages 16 and 25), or
the “final Office Action has not cited clear and particular evidence of record in support of
this [or ‘a’] motivation to combine Herwig [and one or more of the secondary references] as
is required by In re Dembiczak and In re Lee” (principal brief-pages 18, 19, 20 (2 places), 21,
22, 23 (2 places), 24, and 25) and is improperly using hindsight “contrary to In re
Dembiczak” (principal brief-pages 14, 16, 18, 20, 23, and 25) and cannot rely on common
sense alone to support a rejection “as this is contrary to In re Zurko” (principal brief, pages
18 and 23).
Thus, appellant’s briefs did no more than provide a boilerplate citation of case law
and then assert that the examiner’s rejection did not comply with that case law. That our
opinion did not discuss the cases does not mean that we overlooked or disagreed with the
more recent case law: the question is whether the obviousness conclusions in our opinion
were explained based on concrete evidence in the record. The request for rehearing does not
address the merits of the reasoning in our opinion. We do not disagree with any of the cited
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case law, except for the requirement to show a reasonable expectation of success in electrical
cases as discussed in connection with point B, infra. And, while the suggestion, teaching, or
motivation to combine must be based on objective evidence of record, rather than common
knowledge or common sense, the Federal Circuit recently made it clear that the suggestion
does not have to be expressly stated in the references, but may be implicit from the prior art
as a whole. See In re Kahn, 441 F.3d 977, 987, 78 USPQ2d 1329, 1336 (Fed. Cir. 2006),
citing In re Kotzab, 217 F.3d 1365, 1370, 55 USPQ2d 1313 (Fed. Cir. 2000). The
implication by appellant that there must be an express teaching in the references to make the
proposed modification or combination is incorrect.
Our opinion relied on the concrete evidence provided by the applied references as
required by Zurko in reaching our determination of obviousness of the instant claimed
subject matter. For example, with regard to instant independent claim 1, we explained, at
pages 7-9 of our opinion, how the structure of Herwig, together with Flannery’s teaching of
an internal power supply for the USB hub, would have led the artisan to connect power
supply 112, in Herwig, to the USB hub 114, in Herwig, to provide a self-powered alternative
to a USB cable provided power supply. We note that appellant has pointed to no error in our
analysis in his request for rehearing.
Appellant does not state why our opinion does not comply with Lee’s requirement
that the factual inquiry whether to combine references must be thorough and searching and
must be based on objective evidence of record. Again, using our analysis of the applied
references and how they are applied against instant claim 1, at pages 7-9 of our opinion, we
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have, indeed, based our conclusion of obviousness on the objective evidence of record.
As we explained, with regard to claim 11, for example, Figure 3 of Herwig discloses a
housing 110, a power supply 112 enclosed in the housing, a bus hub 114 enclosed in the
housing, a downstream receptacle (the rectangular box at the top of 110, into which lines
106, 136, and 138 are connected) connected to both the power supply 112 and the bus hub
114, and wherein the downstream receptacle is coupled to a cable 90, 94 to couple power
from the power supply 112 and data signals from the bus hub 114 to the cable, 90, 94, and to
receive power and data signals from the cable 90, 94. In fact, the only portion of claim 1 not
explicitly described by Herwig is that the power supply is coupled to the bus hub to supply
power to the bus hub. But, it would have been clear to artisans that Herwig’s bus hub 114
must receive power from some source in order to operate. It may very well be through cable
90, 94, since the cable is shown as being connected to “INTERFACE TO TERMINAL
(POWER, LAN, AND USB),” but the power must be supplied from some power source.
In addition to the knowledge that the USB hub of Herwig must receive power from
some source, Flannery described a power source for USB devices wherein such devices were
“self-powered.” See, for example, Figure 1A of Flannery wherein a remote hub is shown as
having its own internal power source 108. Thus, the objective evidence provided by Herwig
and Flannery established that a USB hub may have either an external or an internal power
source. With this explicit knowledge provided by the applied references, the artisan viewing

1 We take claim 1 as representative of the other claims of Group I (claims 1-4, 7, 11, 12, 16, 17, 19, 28-32, 39,
and 41-43) since appellant does not argue these claims separately from one another and the claims will therefore
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Figure 3 of Herwig, where there is disclosed a USB hub and a power supply 112 internal to
the housing but external to the hub, would quickly have been led to provide a power supply
for the USB hub 114. Since a power supply would have been known as necessary to power
the USB hub 114, and there is already a power supply 112, internal to the housing but
external to the hub, the skilled artisan would have been led to connect the power supply 112
to USB hub 114 since, if a power supply is not already provided internal to the USB hub, the
power supply 112 would be the closest element from which to tap power in order to supply
the power necessary for the correct functioning of USB hub 114.
It is our view that this analysis is a clear indication of “concrete evidence” in the
record to support the findings of obviousness, within the dictates of Zurko. We note, again,
that appellant has pointed to no specific perceived error in our analysis in his request for
rehearing even though we clearly pointed out how we were applying the teachings of the
references.
Appellant cites Dembiczak and Vaeck for the proposition that there must be clear and
particular evidence of record in support of a motivation to modify Herwig according to
Flannery. Once again, our explanation at pages 7-9 of our decision, as well as our
elucidation supra, clearly explains how there is evidence in this record for combining the
teachings of Herwig and Flannery. We note again that appellant has not pointed to one
single perceived error in our analysis in his request for rehearing.
In citing Rouffet at page 11 of the principal brief, appellant recites that “[E]ven when

stand or fall together. Note pages 12-14 of the principal brief wherein appellant argues the Group I claims
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the level of skill in the art is high, the Board must identify specifically the principle, known
to one of ordinary skill, that suggests the claimed combination.” At page 8 of our decision,
we identified the principle that artisans would have recognized that the USB hub must be
powered from some source. Having teachings, from Herwig and Flannery, that a power
source may be in the USB cable, internal to the USB hub, or within the same housing as the
USB hub, the skilled artisan would have been led to simply connect the already existing
power supply 112, in Herwig, to the USB hub 114 as an alternative to the internal power
source suggested by Flannery. We therefore concluded that the claimed combination was
clearly suggested in the prior art and appellant has not alleged any particular error in our
rationale in the request for rehearing.
At page 11 of the principal brief, appellant also cited Kotzab for the principle that
“[P]articular findings must be made as to the reason the skilled artisan, with no knowledge of
the claimed invention, would have selected these components for combination in the manner
claimed.” Again, reference to our opinion, at page 8, as explained supra, does indicate, in
our view, particular findings as to the reason skilled artisans would have been led to modify
one reference in accordance with the teachings of the other, in order to arrive at the instant
claimed subject matter. Again, appellant has pointed to no perceived error in our reasoning.
With regard to the claims of Group IV (8 and 38, with claim 8 being representative)
and Group VII (13 and 40, with claim 13 being representative), these claims define the cable
as comprising various wires, including a “device power wire,” a “device ground wire,” a

together.
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“computer power wire,” a “computer ground wire,” and a “plurality of signal wires.”
At pages 16-17 and 19-20 of the answer, the examiner specifically pointed out where
many of these limitations may be found in the combinations of Herwig, Flannery, and Kang
(with respect to claim 8) and Herwig and Flannery (with respect to claim 13), but the
examiner admitted that these combinations do not expressly teach a computer ground wire.
The examiner turned to Tsai for a teaching of a cable, pointing to cable system 300 in
Figure 1, and identifying (see page 17 and 19 of the answer) where Tsai discloses a device
power wire, device ground wire, computer power wire, a computer ground wire and a
plurality of signal wires.
The examiner then concluded that it would have been obvious to have implemented
the cable of Herwig, as modified by Flannery, or Flannery and King, using the cable system
teachings of Tsai, “for the advantage of providing a compact and clean wiring in said
housing, which is a [sic] common sense to one of ordinary skill in the art of electronics
wiring” (answer-pages 17, 20) (emphasis added).
Thus, the examiner appears to have relied, at least in part, on “common sense” of the
skilled artisan in reaching his conclusion of obviousness. Whereas Zurko and Lee warn
against the use of “common sense,” per se, in making a determination of obviousness, the use
of “common sense” is not precluded where evidence of record tends to support the allegation
of “common sense.” While the suggestion, teaching, or motivation to combine must be
based on objective evidence of record, rather than common knowledge or common sense, the
suggestion does not have to be expressly stated in the references, but may be implicit from
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the prior art as a whole. In re Kahn, 441 F.3d at 987, 78 USPQ 2d at 1336.
As can be seen by the examiner’s explanation of the cable descriptions in the applied
references, with regard to the rejections of the Group IV and Group VII claims, the examiner
does not rely on “common sense” to provide evidence of obviousness. Rather, the examiner
has relied on the evidence provided by the applied references, e.g., the cable of Tsai
comprising a device power wire, a device ground wire, a computer power wire, a computer
ground wire, and a plurality of signal wires, as the basis for providing for these wires in the
cable of the Herwig device, as modified by either Flannery or by Flannery and Kang, using
the term “common sense” to describe why the artisan would have been led to combine the
teachings of these references which provide all of the evidence needed for making such a
combination, rather than using “common sense” as the evidence itself.
Thus, we find unpersuasive appellant’s allegation that, somehow, our decision was in
error because we did not specifically discuss each and every one of the Federal Circuit cases
cited by appellant. Once again, we do not disagree with these cases, but, more importantly,
appellant has simply not pointed out how the application of these cases to the instant claimed
subject matter and to our reasoning in holding such subject matter obvious, within the
meaning of 35 U.S.C. § 103, is alleged to require a reversal of any of our findings and/or of
our decision.

B.
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With regard to a reasonable expectation of success, it is agreed, as stated in Vaeck
and MPEP § 2143, that this may be a relevant factor in determining whether a prima facie
case of obviousness has been established in some circumstances. Such a test is appropriate
in chemical cases where results are often unpredictable. However, in mechanical and/or
electrical cases, there is seldom any uncertainty as to the outcome of combining references.
Thus, in the instant case, we found, for example, that the USB hub must be powered
from some source and that the skilled artisan would have been led to simply connect the
already existing power supply 112, in Herwig, to the USB hub 114 as an alternative to the
internal power source suggested by Flannery, in view of the teachings from the references
that a power source may be in the USB cable, internal to the USB hub, or within the same
housing as the USB hub. There is no doubt that connecting the power supply to the USB hub
will work and, therefore, there is simply no question about “reasonable expectation of
success.”
Hence, appellant’s argument anent “reasonable expectation of success” is not
persuasive. It may be but one factor, and clearly not the only and deciding factor, as to
whether certain claimed subject matter is obvious, within the meaning of 35 U.S.C. § 103.
We have set forth in our opinion reasoning as to why the applied references would have
suggested the instant claimed subject matter and appellant has failed to indicate, in the
request for rehearing, any perceived error in our analysis or any reasons why there is no
reasonable expectation of success.
C.
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With regard to appellant’s argument that we disregarded the last seven rejections
(Grounds VII-XIII) with but a single paragraph in our opinion, we are unpersuaded of any
error on our part. Appellant, in each ground, quoted from the final rejection and then alleged
that the final rejection had not cited clear and particular evidence of record to support this
motivation, that the rejection cannot rely on common sense alone (Ground VII), that the final
rejection improperly used hindsight, and/or that it did not cite evidence of a reasonable
expectation of success. None of these general allegations of insufficient evidence or
improper hindsight attempt to point out the error in the examiner’s specific rationale. Our
general affirmance of the rejection of these claims is commensurate with the general non-
specific nature of the arguments set forth by appellant. We need be no more specific in our
rationale than appellant has been in the general denial of obviousness. While it is true that
the examiner has the initial burden to establish a prima facie case of obviousness, once that
case has been established (which it has in the instant case for the reasons set forth by us in
our opinion), the burden shifts to appellant to argue, if he/she can, with specificity what the
alleged errors in the examiner’s case are perceived to be. A mere general allegation by
appellant that there is a “lack of clear and particular evidence of record in support of a
motivation to combine the references,” in response to the prima facie case, is insufficient to
rebut said prima facie case. The examiner set forth a prima facie case.
With regard to the Group VII claims 13 and 40, the examiner has established a prima
facie case of obviousness by assessing the claimed subject matter, determining how it differs
from the combination of Herwig and Flannery (the difference is in no explicit showing of the
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computer ground wire in the Herwig/Flannery combination), providing a teaching of a cable
having such a computer ground wire in Tsai, and providing a reason why the skilled artisan
would have been led to modify the references to arrive at the instant claimed subject matter
(“proving a compact and clean wiring in said housing”). See pages 19-20 of the answer.
Appellant has provided no specific reason for alleging an error in the examiner’s rationale.
With regard to the Group VIII claim 14, the examiner has established a prima facie
case of obviousness by applying Herwig, Flannery, and Tsai as before, recognizing that these
references lack a teaching of the plurality of wires comprising a “twisted pair,” and applying
Decuir (Figure 6) for such a teaching, finding that it would have been obvious to make the
combination “for the advantage of supporting high speed version of USB,” citing column 5,
lines 5-7, of Decuir. (Answer-page 20). Appellant has indicated no specific error in the
examiner’s reasoning.
With regard to the Group IX claim 15, the examiner has established a prima facie
case of obviousness by applying Herwig, Flannery, and Tsai as before, recognizing that this
combination did not explicitly teach a plurality of signal wires comprising a “fiber optic
channel,” and applying Sanchez (Figure 2A) for a teaching of an electro-optic interface
system having such signal wires. The examiner reasoned that the artisan would have been
led to make the combination “for the advantage of providing an electro-optic system of
operation for communicating high aped [sic, speed] digital signals between two or more
electronic systems (See Sanchez, col. 1, lines 57-60) without spreading electromagnetic
noise, which is well known to one of ordinary skill in the art of fiber optical communication”
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(Answer-page 21). Appellant has indicated no specific error in the examiner’s reasoning.
With regard to the Group X claims 21-23, the examiner has established a prima facie
case of obviousness by explaining the various features of Herwig and Tsai (Answer-pages
21-22) and finding that it would have been obvious to have implemented the cable of Herwig
in a cable system as disclosed by Tsai “for the advantage of providing a compact and clean
wiring in said housing” (Answer-page 22). Appellant has indicated no specific error in the
examiner’s reasoning.
With regard to the Group XI claim 26, the examiner has established a prima facie
case of obviousness by explaining the various features of Herwig and Tsai (Answer-pages
23-24) and adding Decuir for the feature of a plurality of signal wires comprising a “twisted
pair.” The examiner reasoned that it would have been obvious to combine these references
“for the advantage of supporting high speed version of USB (See Decuir, col. 5, lines 5-7)”
(Answer-page 24). Appellant has indicated no specific error in the examiner’s reasoning.
With regard to the Group XII claim 27, the examiner has established a prima facie
case of obviousness by explaining the various features of Herwig and Tsai, recognizing that
this combination did not explicitly teach a plurality of signal wires comprising a “fiber optic
channel,” and applying Sanchez (Figure 2A) for a teaching of an electro-optic interface
system having such signal wires. The examiner reasoned that the artisan would have been
led to make the combination “for the advantage of providing an electro-optic system of
operation for communicating high aped [sic, speed] digital signals between two or more
electronic systems (See Sanchez, col. 1, lines 57-60) without spreading electromagnetic
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noise, which is well known to one of ordinary skill in the art of fiber optical communication”
(Answer-page 24). Appellant has indicated no specific error in the examiner’s reasoning.
With regard to the Group XIII claims 37 and 48, the examiner has established a prima
facie case of obviousness by applying Herwig and Flannery as before, and adding Urade for
a USB hub 11 (Figure 4), wherein a hub repeater 12 is connected to an upstream port (Root
Port 13). The examiner explained that it would have been obvious to have included a hub
repeater as in Urade, in the hub bus of Herwig, as modified by Flannery, “so as to manage
port connectivity between a selected downstream functional device and a host computer
connected to said upstream port (i.e., root port; See Urade, col. 3, lines 60-62)” (Answer-
page 13).
The examiner then explained that the combination of Herwig, Flannery, and Urade
did not expressly teach that the hub controller and hub repeater comprised memory stored
instructions executable by a processor or logic gates or a programmable logic device
(Answer-pages 24-25). The examiner turned to Silverman (Abstract and Figure 4) for a
teaching of a configurable universal serial bus (USB), and indicated, at page 25 of the
answer, where, in Silverman, the memory stored instructions, logic gates, and programmable
logic device are found.
The examiner concluded that it would have been obvious to have included the
configuration components of Silverman in the hub controller and hub repeater of Herwig, as
modified by Flannery and Urade, “for the advantage of providing an improved technique for
effecting digital communications between said downstream devices (i.e., digital devices) and
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systems using different communication protocols (See Silverman, col. 4, lines 10-13).”
Appellant has indicated no specific error in the examiner’s reasoning.
Thus, the examiner has provided reasoning, amounting to a prima facie case of
obviousness, in our view, for the rejections of each and every claim grouping, including
Groups VII through XIII, and appellant merely alleges, generally, that the examiner has cited
no clear and particular evidence of record in support of a motivation for the combinations of
references and the examiner has cited no evidence of a reasonable expectation of success.
Such general denials of the examiner’s reasonable explanations of the rejections, absent any
specifics as to what appellant perceives as the error or errors in the examiner’s rationales, are
not persuasive of nonobviousness.
Since appellant has not pointed to any specifics, regarding any perceived errors in the
examiner’s rejections, preferring, instead, to merely generally allege a lack of “clear and
particular evidence of record in support of this motivation to combine” the references and a
lack of “evidence of a reasonable expectation of success of the proposed combination” (see
page 20 of the principal brief with regard to the Group VII claims 13 and 40, page 21 with
regard to the Group VIII claim 14, page 22 with regard to the Group IX claim 15, page 23
with regard to the Group X claims 21-23, and the Group XI claim 26, page 24 with regard to
the Group XII claim 27, and page 25 with regard to the Group XIII claims 37 and 48), we
find appellant’s allegations to be without merit.

While it is, indeed, an argument to allege a lack of clear and particular evidence of
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record in support of a motivation to combine the references, it is not persuasive in view of
the rationale set forth in our opinion, and above, a rationale, we hasten to point out, which
has
not been convincingly rebutted by appellant’s showing, or even an allegation, of any specific
error in our reasoning.
Only arguments actually made by appellant have been considered by this Board.
Arguments which appellant could have made but chose not to make in the briefs have not
been considered and are deemed to be waived [see 37 CFR § 41.37 (c)(1)(vii)].
D.
Appellant alleges that our opinion misapprehended appellant’s argument that there is
no clear and particular evidence of a suggestion or motivation to form the proposed
combinations of references.
We did not misapprehend appellant’s argument. The argument simply did not
specifically point out the errors in the examiner’s rationale as to why there was evidence to
suggest the proposed combination. For example, following the examiner’s rationale, we
identified the principle that artisans would have recognized that the USB hub must be
powered from some source. Having teachings, from Herwig and Flannery, that a power
source may be in the USB cable, internal to the USB hub, or within the same housing as the
USB hub, the skilled artisan would have been led to simply connect the already existing
power supply 112, in Herwig, to the USB hub 114 as an alternative to the internal power
source suggested by Flannery. We therefore concluded that the claimed combination was
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clearly suggested in the prior art and appellant has not alleged any particular error in our
rationale in the request for rehearing.
This is “clear and particular evidence of a suggestion” to make the proposed
combination of Herwig and Flannery. Yet, appellant has pointed to nothing in the request for
rehearing tending to negate our reasoning. If appellant has some basis for making this
allegation of non-combinability, then appellant should have specifically indicated where such
a basis is found.
It would appear from appellant’s general allegations of nonobviousness that perhaps
appellant requires that each and every claimed element be specifically taught by the
references, along with a specific teaching in the references for making a proposed
combination before permitting such a combination. If so, that is not the test for obviousness,
within the meaning of 35 U.S.C. § 103.
To reach a non-hindsight driven conclusion as to whether a person having ordinary
skill in the art at the time of the invention would have viewed the subject matter as a whole
to have been obvious in view of multiple references, the Board must provide some rationale,
articulation, or reasoned basis to explain why the conclusion of obviousness is correct, based
on evidence of record. The requirement of such an explanation is consistent with governing
obviousness law. In re Kahn, 441 F.3d at 987, 78 USPQ 2d at 1336.
We believe we have provided such “rationale, articulation, or reasoned basis” at
pages 7-14 of our opinion, as well as in our elucidation of that reasoned basis supra.

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A suggestion, teaching, or motivation to combine the relevant prior art teachings does
not have to be found explicitly in the prior art, as the teaching, motivation, or suggestion may
be implicit from the prior art as a whole, rather than expressly stated in the references. The
test for an implicit showing is what the combined teachings, knowledge of one of ordinary
skill in the art, and the nature of the problem to be solved as a whole would have suggested
to those of ordinary skill in the art. In re Kahn, citing Kotzab at 217 F.3d 1365, 1370.
For the reasons set forth in our opinion, it is our view that the combinations of
references applied by the examiner would clearly have suggested the instant claimed subject
matter even if not explicitly set forth in the references. The nature of the problem to be
solved by the instant invention, i.e., a power supply coupled directly to the bus hub to supply
power to that bus hub, and the teachings of Herwig in providing a power supply external to
the bus hub and Flannery in providing for an internal bus hub power supply, would clearly
have suggested to the artisan a power supply being coupled to the bus hub to supply power to
the bus hub, as claimed.
We have carefully considered appellant’s request for rehearing. We grant the request
to the extent that we have expanded the panel hearing this case and we have reconsidered our
decision. However, the request is denied with regard to making any changes in our decision
of November 22, 2005.

Appeal No. 2005-2753
Application No. 09/730,238

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No time period for taking any subsequent action in connection with this appeal may
be extended under 37 CFR § 1.136(a)(1)(iv) (2004).
DENIED

MICHAEL R. FLEMING )
Chief Administrative Patent Judge )
)
)
)
GARY V. HARKCOM )
Vice Chief Administrative Patent Judge )
)
)
) BOARD OF PATENT
ERROL A. KRASS ) APPEALS AND
Administrative Patent Judge ) INTERFERENCES
)
)
)
JERRY SMITH )
Administrative Patent Judge )
)
)
)
LEE E. BARRETT )
Administrative Patent Judge )

EK/rwk
Comment [COMMENT1]: The year
should be entered here.
Appeal No. 2005-2753
Application No. 09/730,238

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SCHWEGMAN, LUNDBERG,
WOESSNER & KLUTH, P.A.
P.O. BOX 2938
MINNEAPOLIS, MN 55402-0938