Appeal No. 1997-3719 Page 9
Application No. 08/559,156
supported by any evidence that would have led an artisan to3
arrive at the claimed invention.
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. That is, the showing must be clear and
particular. 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) ("Mere denials and
conclusory statements, however, are not sufficient to
establish a genuine issue of material fact."); In re Sichert,
566 F.2d 1154, 1164, 196 USPQ 209, 217 (CCPA 1977) ("The
examiner's conclusory statement that the specification does
not teach the best mode of using the invention is
unaccompanied by evidence or reasoning and is entirely
inadequate to support the rejection."). See also In re
Dembiczak, 175 F.3d 994, 999, 50 USPQ2d 1614, 1617 (Fed. Cir.
1999).
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