Appeal No. 97-0169
Application No. 08/194,369
subject matter is prima facie obvious must be supported by evidence, as shown by some
objective teaching in the prior art or by knowledge generally available to one of ordinary
skill in the art that would have led that individual to combine the relevant teachings of the
references to arrive at the claimed invention. See In re Fine, 837 F.2d 1071, 1074, 5
USPQ2d 1596, 1598 (Fed. Cir. 1988).
After a careful review of the record in this case, we are compelled to agree with
appellant that the Examiner’s conclusion of obviousness is not supported by the types of
factual findings necessary to reach this conclusion. Our reading of the Examiner’s reasons
for the determination of obviousness causes us to conclude that the Examiner merely
believes the claimed invention to be obvious because is seems that it would have been
obvious. Although we agree with the Examiner that it may have been obvious to have
different reference or calibration curves for varied samples, the Examiner has not provided
a teaching in Parobek or a line of reasoning as to why it would have been obvious to one
of ordinary skill in the art at the time of the invention to have “pretested his reference
samples and stored the calibration curves [in memory].” . (See answer at page 5.) The
Examiner has not addressed the limitations set forth in
the language of the claim concerning the “automatic” analysis and use of these results to
automatically retrieve the appropriate calibration data to measure the thickness. The prior
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