Appeal No. 2001-0338
Application No. 08/932,953
Examiner's reason to combine the references is to avoid abrupt
changes in the display intensity. Appellants' specification
teaches that reduction should be gradual to avoid abrupt changes
that distract the user from other activity the user is
performing. Appellants argue that the Examiner's reason is
relying on impermissible hindsight provided by the Appellants'
specification.
When determining obviousness, "[t]he factual inquiry whether
to combine references must be thorough and searching." In re
Lee, 277 F.3d 1338, 1343, 61 USPQ2d 1430, 1433 (Fed. Cir. 2002),
citing McGinley v. Franklin Sports, Inc., 262 F.3d 1339, 1351-52,
60 USPQ2d 1001, 1008 (Fed. Cir. 2001). "It must be based on
objective evidence of record" Id. "Board conclusory statements
regarding the teaching of multiple references, standing alone,
are not 'evidence.'" In re Dembiczak, 175 F.3d 994, 999,
50 USPQ2d 1614, 1617. "Mere denials and conclusory statements,
however, are not sufficient to establish a genuine issue of
material fact." Dembiczak, 175 at 999, 50 USPQ2d at 1617, citing
McElmurry v. Arkansas Power & Light Co., 995 F.2d 1576, 1578,
27 USPQ2d 1129, 1131 (Fed. Cir. 1993).
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