Appeal No. 1999-0387 Page 16
Application No. 08/590,278
As to claims 5 and 11, the examiner has not cited any
evidence as to why it would have been obvious at the time the4
invention was made to a person having ordinary skill in the
art to have the securing means at the side margin while having
the adhesive adjacent to the upper margin. Absent such 5
evidence, we conclude that the only suggestion for modifying
4Evidence of a suggestion, teaching, or motivation to
modify a reference may flow from the prior art references
themselves, the knowledge of one of ordinary skill in the art,
or, in some cases, from the nature of the problem to be
solved, see Pro-Mold & Tool Co. v. Great Lakes Plastics, Inc.,
75 F.3d 1568, 1573, 37 USPQ2d 1626, 1630 (Fed. Cir. 1996),
Para-Ordinance Mfg., Inc. v. SGS Importers Int'l., Inc., 73
F.3d 1085, 1088, 37 USPQ2d 1237, 1240 (Fed. Cir. 1995), cert.
denied, 117 S. Ct. 80 (1996), although "the suggestion more
often comes from the teachings of the pertinent references,"
In re Rouffet, 149 F.3d 1350, 1355, 47 USPQ2d 1453, 1456 (Fed.
Cir. 1998). The range of sources available, however, does not
diminish the requirement for actual evidence. That is, the
showing must be clear and particular. See, e.g., C.R. Bard
Inc. v. M3 Sys., Inc., 157 F.3d 1340, 1352, 48 USPQ2d 1225,
1232 (Fed. Cir. 1998), cert. denied, 119 S. Ct. 1804 (1999).
A broad conclusory statement regarding the obviousness of
modifying a reference, standing alone, is not "evidence."
E.g., McElmurry v. Arkansas Power & Light Co., 995 F.2d 1576,
1578, 27 USPQ2d 1129, 1131 (Fed. Cir. 1993); In re Sichert,
566 F.2d 1154, 1164, 196 USPQ 209, 217 (CCPA 1977). See also
In re Dembiczak, 175 F.3d 994, 999, 50 USPQ2d 1614, 1617 (Fed.
Cir. 1999).
5In this regard, if an artisan wanted the helical wire 4
of Drake to be on the side edge of the pad, the artisan would
have rotated the pad from its second "normal use" position to
its first "normal use" position.
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