Appeal No. 2001-2327 Page 9
Application No. 08/835,460
addition, the teaching, motivation or suggestion may be implicit from the prior art as a
whole, rather than expressly stated in the references. See WMS Gaming, Inc. v.
International Game Tech., 184 F.3d 1339, 1355, 51 USPQ2d 1385, 1397 (Fed. Cir.
1999). The test for an implicit showing is what the combined teachings, knowledge of one
of ordinary skill in the art, and the nature of the problem to be solved as a whole would have
suggested to those of ordinary skill in the art. See In re Keller, 642 F.2d 413, 425, 208
USPQ 871, 881 (CCPA 1981) (and cases cited therein). Whether the examiner relies on
an express or an implicit showing, the examiner must provide particular findings related
thereto. See Dembiczak, 175 F.3d at 999, 50 USPQ2d at 1617. Broad conclusory
statements standing alone are not "evidence." Id. When an examiner relies on general
knowledge to negate patentability, that knowledge must be articulated and placed on the
record. See In re Lee, 277 F.3d 1338, 1342-45, 61 USPQ2d 1430, 1433-35 (Fed. Cir.
2002).
In the rejection before us in this appeal, the examiner has failed to provide any
evidence as to why the making of the lower rubber ring and coil spring rubber ring of the
admitted prior art integral is an obvious matter of engineering choice and that such a
modification would have arrived at the claimed subject matter. In that regard, we note that
the lower rubber ring 101 and coil spring rubber ring 102 of the admitted prior art could be
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