Appeal No. 1998-2601
Application 08/809,052
Konecny teaches the presence of a leakage flux, and the
examiner’s inherency argument is based on pure speculation as
to what would be achieved if the motor of Bahn was modified in
accordance with the teachings of Konecny [reply brief].
We agree with the position argued by appellant. The
examiner’s rejection is based upon several speculative
assumptions as to what is taught by Bahn and Konecny and as to
what would result if the motor taught by Bahn was modified by
certain teachings of Konecny. Additionally, the examiner’s
motivation for combining the teachings of Bahn with Konecny
comes entirely from appellant’s own disclosure to achieve the
advantages of flux leakage which is only disclosed by
appellant. The examiner has essentially substituted her
beliefs and opinions for the deficiencies in the evidentiary
showings. 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 Passaic, 745 F.2d 1468, 1471-72, 233 USPQ
785, 787-88 (Fed. Cir. 1984); In re Knapp-Monarch Co., 296
8
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