Appeal No. 1998-1639
Application No. 08/424,259
to the examiner (Answer, pages 4 and 5), “the mere shape of
the rotor would have been an obvious choice of design to one
having ordinary skill in the art.” The examiner is also of
the opinion (Answer, page 5) that La Belle inherently teaches
a rotor wheel having a rotational inertia that is part of the
base inertia. The examiner acknowledges (Answer, page 5),
however, that the dynamometer in La Belle fails to explicitly
teach the specifically claimed range of 50 to 90 percent of
the base inertia of the dynamometer. With respect to this
specifically claimed range, the examiner is again of the
opinion (Answer, page 5) that it is “deemed as being an
obvious design choice to one having ordinary skill in the
art.”
Appellants argue (Brief, page 18) that the examiner has
“failed to establish a prima facie case of obviousness.” We
agree with appellants’ argument because the examiner’s
reliance on design choice to fill in the missing gaps in the
teachings of La Belle is not a sufficient showing of prior art
that we can review to determine whether the claimed invention
is indeed obvious over the prior art. Stated differently, the
examiner’s opinion can not take the place of evidence.
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