Appeal No. 1999-0348 Page 17
Application No. 08/663,471
The applied prior art (i.e., Laibow) fails to disclose or
suggest a resistance heater wire having a parallel shunt at
one end thereof which bypasses a portion of the heater wire.
Once again, the examiner has not applied any evidence , absent 3
the use of impermissible hindsight, as to why it would have
been obvious to one of ordinary skill in the art at the time
the invention was made to have utilized a parallel shunt as
recited in claim 19. Accordingly, the decision of the
examiner to reject claim 19 under 35 U.S.C. § 103 is reversed.
3Evidence of a suggestion, teaching, or motivation to
modify a reference may flow from the prior art references
themselves, the knowledge of one of ordinary skill in the art,
or, in some cases, from the nature of the problem to be
solved, see Pro-Mold & Tool Co. v. Great Lakes Plastics, Inc.,
75 F.3d 1568, 1573, 37 USPQ2d 1626, 1630 (Fed. Cir. 1996),
Para-Ordinance Mfg. v. SGS Imports Intern., Inc., 73 F.3d
1085, 1088, 37 USPQ2d 1237, 1240 (Fed. Cir. 1995), although
"the suggestion more often comes from the teachings of the
pertinent references," In re Rouffet, 149 F.3d 1350, 1355, 47
USPQ2d 1453, 1456 (Fed. Cir. 1998). The range of sources
available, however, does not diminish the requirement for
actual evidence. See, e.g., C.R. Bard, Inc. v. M3 Sys., Inc.,
157 F.3d 1340, 1352, 48 USPQ2d 1225, 1232 (Fed. Cir. 1998). A
broad conclusory statement regarding the obviousness of
modifying a reference, standing alone, is not "evidence."
E.g., McElmurry v. Arkansas Power & Light Co., 995 F.2d 1576,
1578, 27 USPQ2d 1129, 1131 (Fed. Cir. 1993); In re Sichert,
566 F.2d 1154, 1164, 196 USPQ 209, 217 (CCPA 1977).
Page: Previous 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 Next
Last modified: November 3, 2007