Appeal No. 1998-2818
Application 08/550,521
Rijckaert,
9 F.3d 1531, 1532, 28 USPQ2d 1955, 1956 (Fed. Cir. 1993); In
re Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444 (Fed.
Cir. 1990). In order to establish a prima facie case of
obviousness, the prior art teachings must be sufficient to
suggest to one of ordinary skill in the art making the
modification needed to arrive at the claimed invention. See,
for example, In re Lalu, 747 F.2d 703, 705, 223 USPQ 1257,
1258 (Fed. Cir. 1984). Here, the examiner tacitly admits that
neither Uni-Charm nor Kao provides a teaching or suggestion of
forming the side panels separately from the body of the
diaper. The examiner seeks to overcome this deficiency in
Uni-Charm and Kao by stating that the differences between the
claimed subject matter and the prior art references are
obvious matters of design choice, without providing any
evidence as to why this might be the case. However, the
subjective opinion of the examiner without evidence in support
thereof does not provide a factual basis upon which the legal
conclusion of obviousness may be reached. See In re GPAC
Inc., 57 F.3d 1573, 1582, 35 USPQ2d 1116, 1123 (Fed. Cir.
9
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