Appeal No. 95-4544
Application 07/975,905
Upon a careful review of Jakobs, we fail to find that the
references teach the above limitations as recited in Appellant's
claim 1.
The Examiner argues that these limitations are well known in
the art to the skilled artisan. However, the Examiner has not
provided a reference or an affidavit as evidence of these
statements. 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, common knowledge of
unquestionable demonstration. Our reviewing court requires this
evidence in order to establish a prima facie case. In re
Knapp-Monarch Co., 296 F.2d 230, 232, 132 USPQ 6, 8 (CCPA 1961);
In re Cofer, 354 F.2d 664, 668, 148 USPQ 268, 271-72 (CCPA 1966).
Furthermore, we fail to find any suggestion of
modifying Jakobs to provide a computer file editing system as
recited in Appellant's claim 1. The Federal Circuit states that
"[t]he mere fact that the prior art may be modified in the manner
suggested by the Examiner does not make the modification obvious
unless the prior art suggested the desirability of the
modification." In re Fritch, 972 F.2d 1260, 1266 n.14, 23 USPQ2d
1780, 1783-84 n.14 (Fed. Cir. 1992), citing In re Gordon, 733
7
Page: Previous 1 2 3 4 5 6 7 8 9 Next
Last modified: November 3, 2007