Appeal No. 1998-0187
Application No. 08/247,518
Gordon, 733 F.2d 900, 902, 221 USPQ 1125, 1127 (Fed. Cir.
1984). Absent the appellant's own disclosure we can think of
no reason why one of ordinary skill in the art would have been
motivated to mold a ceramic plug separate and distinct from
the ceramic article of Nakamura, form an assembly by inserting
the plug into a recess formed in the article and fire the
assembly to secure the article and plug together. The
evidentiary record before us is totally devoid of any sugges-
tion or motivation that would have led one of ordinary skill
to make such a modification. The subjective opinion of the
examiner as to what would have been obvious, without evidence
in support thereof, is not a basis upon which the legal
conclusion of obviousness may be reached. Note In re GPAC
Inc, 57 F.3d 1573, 1582, 35 USPQ2d 1116, 1123 (Fed. Cir. 1995)
and In re Warner, 379 F.2d 1011, 1017, 154 USPQ 173, 178 (CCPA
1967), cert. denied, 389 U.S. 1057 (1968).
The motivation relied upon by the examiner for combining
the teachings of the references to arrive at the appellant’s
claimed invention comes from the appellant’s disclosure rather
than from the prior art. Thus, the examiner used
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