Appeal No. 96-4181
Application 08/139,664
defect, the error message including a first signal
identifying, by location on the pallet, one of the plurality of workpieces detected as having a defect and
a second signal, associated with said first signal, to indicate a nature of the defect detected therefor.
Furthermore, the Examiner has not pointed to any teaching or suggestion to modify Sakamoto as the
Examiner has proposed.
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 or capable of unquestion-able
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). 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 F.2d 900, 902, 221 USPQ 1125, 1127 (Fed. Cir. 1984). "Obviousness may not be
established using hindsight or in view of the teachings or suggestions of the inventor." Para-Ordnance
Mfg., 73 F.3d at 1087, 37 USPQ2d at 1239, citing W. L. Gore, 721 F.2d at 1551, 1553, 220
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