When the PTO makes “core factual findings in a determination of patentability,” it “cannot simply reach conclusions based on its own understanding or experience—or on its assessment of what would be basic knowledge or common sense.” Instead, the PTO “must point to some concrete evidence in the record in support of these findings.”
Background / Facts: The application on appeal here from rejection at the PTO is directed to estimating the amount of noise in signals received from a wireless communication network. To achieve accurate noise correlation and signal quality estimation, the application discloses and claims a specific method of obtaining certain “propagation channel estimates,” which take into account, among other things, the interference and noise a transmitted signal incurs as it propagates between the network transmitter and the receiver (e.g., by reflecting off of buildings or passing through different types of media).
Issue(s): Whether the Board’s conclusion in finding that the prior art discloses the “propagation channel estimates” limitation—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” is sufficient to satisfy at the very least its evidentiary burden.
Holding(s): No. “Our review of the record indicates that the Examiner never addressed the ‘propagation channel estimates’ limitation. … What is more, the Board did not address the limitation until rehearing, at which point it made only a conclusory statement without citing to any record evidence to support the finding. … Although it might be true that the ‘propagation channel estimates’ limitation would have been obvious because the prior art can be applied to any transmission or reception media, the Board failed to identify any record evidence to support such a statement. When the Board makes ‘core factual findings in a determination of patentability,’ it ‘cannot simply reach conclusions based on its own understanding or experience—or on its assessment of what would be basic knowledge or common sense.’ … Instead, ‘the Board must point to some concrete evidence in the record in support of these findings.’”