Appeal No. 2003-1155 Page 6
Application No. 08/821,995
assertion as not properly officially noticed or not properly based upon common
knowledge, the examiner must support the finding with adequate evidence.4 See In re
Chevenard, 139 F.2d 711, 713, 60 USPQ 239, 241 (CCPA 1943) and MPEP 2144.03.
Since the applied prior art (i.e., Malott and Di Palma) does not teach or suggest
the use of a 12-24 volt DC motor as recited in claims 4 and 11, the decision of the
examiner to reject claims 4 and 11 under 35 U.S.C. § 103 is reversed.5
Claims 1 to 3, 5 to 10 and 12 to 17
The decision of the examiner to reject claims 1 to 3, 5 to 10 and 12 to 17 under
35 U.S.C. § 103 is affirmed for the reasons set forth in our previous decision (Paper No.
17, mailed February 20, 2001).6 This affirmance is final for purposes of judicial review.
3(...continued)
modifying a reference, standing alone, is not "evidence." Thus, 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). See also In re Dembiczak,
175 F.3d 994, 999, 50 USPQ2d 1614, 1617 (Fed. Cir. 1999).
4 On page 4 of the answer (Paper No. 25), the examiner refers to two references that have not
been applied in the rejection under appeal. These references will be given no consideration since they
were not included in the statement of the rejection. See Ex parte Raske, 28 USPQ2d 1304, 1305 (Bd.
Pat. App. & Int. 1993).
5 Accordingly, there is no need for us to weigh the declaration from David L. Krell, dated March 18,
2002. However, we wish to point out to the examiner that the issues of long-felt need and non-analogous
art are pertinent and relevant to the patentability of claims 4 and 11 and should have been fully addressed
by the examiner. See page 4 of the answer (Paper No. 25) wherein the examiner states that these issues
are not pertinent to the rejection of claims 4 and 11.
6 The declaration from David L. Krell, dated March 18, 2002 submitted in response to the limited
reopening of prosecution of claims 4 and 11 is not evidence before us in the rejection of claims 1 to 3, 5 to
10 and 12 to 17.
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