Appeal No. 2000-1489 Page 11
Application No. 09/188,421
as recited in claims 2 to 4 and 6 to 8. To supply this
omission in the teachings of the applied prior art, the
examiner made the above-quoted determination that this
difference would have been obvious to an artisan. However,
this determination has not been supported by any evidence1
that would have led an artisan to arrive at the claimed
invention.
In our view, the only suggestion for modifying the
applied prior art in the manner proposed by the examiner to
meet the above-noted limitations stems from hindsight
1Evidence 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., Inc. v. SGS Importers Int'l., Inc., 73
F.3d 1085, 1088, 37 USPQ2d 1237, 1240 (Fed. Cir. 1995), cert.
denied, 117 S. Ct. 80 (1996), 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. A broad
conclusory statement regarding the obviousness of modifying a
reference, standing alone, is not "evidence." See In re
Dembiczak, 175 F.3d 994, 999, 50 USPQ2d 1614, 1617 (Fed. Cir.
1999).
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