Appeal No. 1997-3798 Page 9
Application No. 08/272,018
We agree with the appellant's argument (brief, pp. 10-12)
that the examiner's rejection of claims 1 and 2 is in error.
In that regard, the examiner's determination of obviousness
has not been supported by any evidence that would have led an
artisan to arrive at the claimed invention. Evidence 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
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 13 14 Next
Last modified: November 3, 2007