Appeal No. 1997-2426
Application 08/087,849
As a result of these findings, we fail to find the proper motivation to combine the
teachings of Heilmann and Dowdle to modify Nakano. We fail to find evidence to support the
modification. Heilmann and Dowdle do not support the conclusion that the modification is a matter
of design choice. 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 or shown to be common knowledge of
unquestionable demonstration. Our reviewing court requires this evidence in order to establish a
prima facie case. In re Piasecki, 745 F.2d 1468, 1471-72, 223 USPQ 785, 787-88 (Fed. Cir.
1983); 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). Our reviewing court states in
In re Piasecki, 745 F.2d at 1472, 223 USPQ at 788 the following:
The Supreme Court in Graham v. John Deere Co., 383 U. S. 1 (1966), focused
on the procedural and evidentiary processes in reaching a conclusion under section
103. As adapted to ex parte procedure, Graham is interpreted as continuing to
place the “burden of proof on the Patent Office which requires it to produce the
factual basis for its rejection of an application under section 102 and 103.” Citing In
re Warner, 379 F. 2d 1011, 1020, 154 USPQ 173, 177 (CCPA 1967).
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