In Re Charles D. Huston and Darryl J. Cornish

PROST, Circuit Judge,

dissenting-in-part.

I respectfully dissent from that part of the majority opinion affirming the Board’s rejection of claim 1 as unpatentable under 35 U.S.C. § 103(a). The majority concludes that substantial evidence supports the Board’s determination that sufficient motivation existed to combine Dudley with a GPS system on a golf course, stating, “this is a situation where the Board’s ‘path may reasonably be discerned.’ ” Ante at 1281 (quoting Colo. Interstate Gas Co. v. FPC, 324 U.S. 581, 595, 65 S.Ct. 829, 89 L.Ed. 1206 (1945)). Rather than discerning the Board’s path, however, I respectfully submit that the majority has charted an analytical course of its own. Because “we may not supply a reasoned basis for the agency’s action that the agency itself has not given,” Bowman Transp., Inc. v. Arkansas-Best Freight Sys., Inc., 419 U.S. 281, 285-86, 95 S.Ct. 438, 42 L.Ed.2d 447 (1974) (citing SEC v. Chenery Corp., 332 U.S. 194, 196, 67 S.Ct. 1575, 91 L.Ed. 1995 (1947)), I dissent. I would remand that portion of the Board’s decision holding claim 1 of the '293 application unpatentable as obvious so that the Board could fully set forth the reasons why one of ordinary skill in the art would have been motivated to select and combine the relevant prior art references.

The Board sustained the examiner’s rejection of claim 1 as obvious on two specific, alternative grounds. Under both of these stated rationales, the Board concluded that the combination of Fukushima and Wang taught the use of a GPS system to *1283determine the location of a receiver on a golf course. Ex parte Huston, No. 00-0947, slip op. 14, 26 (Bd. Pat.App. & Int. July 21, 2001). The Board then cited Dudley and, alternatively, Paul or Dimitriadis as teaching the display of advertising messages based on the receiver’s position. Id. The Board found the motivation to combine these two sets of references in the prior art itself. According to the Board, “the combined teachings of Wang, Fuku-shima and Dudley would have made it obvious at the time the invention was made to a person having ordinary skill in the art” to (1) replace Wang’s radiolocation system with GPS, because Fukushima taught the advantages of GPS’s simplified, inexpensive navigation system, id. at 16-17; and (2) display advertising messages to a golfer on the course based on the position of the receiver, because Dudley taught “the self-evident advantages” thereof, id. at 17. Similarly, the Board found appellants’ argument that insufficient motivation existed to combine Fukushima, Wang, and either Paul or Dimitriadis “unpersuasive for the reasons expressed above in our discussion of’ the examiner’s rejection under Wang, Fukushima, and Dudley. Id. at 26-27. Additionally, the Board noted that Paul specifically taught the broadcasting of advertisements to golf carts, id. at 27.

The majority does not affirm the Board on either of these two grounds. Instead, it concludes that “Paul provides the motivation to substitute a GPS system for the radio system of Dudley.” The majority concedes that the Board never “cite[d] the Paul reference for this purpose,” and the majority’s sole support for its conclusion is a passage from the Paul reference that does not appear in the Board’s opinion. Ante at 1281. Nevertheless, the majority maintains that its opinion does nothing more than “discer[nj” the Board’s “cryptic” conclusions, id. at 1281. With all due respect, I cannot agree that the Board’s conclusions as to the combination of Paul and Dudley are “cryptic” — they are nonexistent. As this court held in In re Sang-Su Lee, 277 F.3d 1338, 1345-46, 61 USPQ2d 1430, 1435 (Fed.Cir.2002), “review of administrative decisions must be made on the grounds relied on by the agency. ‘If those grounds are inadequate or improper, the court is powerless to affirm the administrative action by substituting what it considers to be a more adequate or proper basis.’ ” Id. (quoting SEC .v. Chenery Corp., 332 U.S. 194, 196, 67 S.Ct. 1575, 91 L.Ed. 1995 (1947)). Where, as here, the Board’s stated grounds for affirming the examiner’s rejection of claim 1 as unpat-entable are clearly insufficient, this court, in my view, is compelled to remand.