Appeal No. 1997-3181
Application No. 08/304,345
We are not inclined to dispense with proof by evidence
when the proposition at issue is not supported by a teaching
in a prior art reference or shown to be common knowledge of
unquestionable demonstration. Our reviewing court requires
this evidence in order to establish a prima facie case. In re
Piasecki, 745 F.2d 1468, 1471-72, 223 USPQ 785, 787-88 (Fed.
Cir. 1984); In re Knapp-Monarch Co., 296 F.2d 230, 232, 132
USPQ 6, 8 (CCPA 1961); In re Cofer, 354 F.2d 664, 668, 148
USPQ 268, 271-72 (CCPA 1966). Furthermore, our reviewing
court states in In re Piasecki, 745 F.2d 1468, 1472, 223 USPQ
785, 788 (Fed. Cir. 1984) the following:
The Supreme Court in Graham v. John Deere Co., 383
U.S. 1 (1966), focused on the procedural and evidentiary
processes in reaching a conclusion under Section 103. As
adapted to ex parte procedure, Graham is interpreted as
continuing to place the "burden of proof on the Patent
Office which requires it to produce the factual basis for
its rejection of an application under section 102 and
103." Citing In re Warner, 379 F.2d 1011, 1020, 154 USPQ
173, 177 (CCPA 1967).
After a review of the teachings in Kohler, although we
find that only available agents are searched for a particular
skill, we fail to find skill groups of available agents with a
common agent-skill indicator as recited in Appellants' claim
1. We disagree with the Examiner that Appellants' claimed
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