Appeal No. 94-4094
Application 07/900,769
argument that a person of ordinary skill in this art would have
combined all of the teachings referred to by the examiner in the
manner proposed, it is not apparent that the proposed combination
of teachings would yield a method satisfying the requirements of
the appealed claims. Uniroyal, Inc. v. Rudkin-Wiley Corp., 837
F.2d 1044, 1052, 5 USPQ2d 1434, 1439 (Fed. Cir. 1988). With
respect to this issue, we recognize that the examiner has stated
in the Answer at page 6 that the utilization of the Kaller
process to install a pre-formed panel element anywhere on a
vehicle body, be it on the roof or on the floor, is seen to be an
obvious expedient to one of ordinary skill in the art. However,
the examiner has cited no factual evidence to support this
statement. It is well settled that obviousness is a legal
conclusion which must be based on facts, not speculation and
generalizations. Thus, in the situation before us, the examiner
has not discharged his initial burden of providing a factual
basis upon which to conclude that one having ordinary skill in
the art would have been led to combine the prior art teachings in
the manner suggested by the examiner to arrive at the claimed
subject matter.
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