Appeal No. 2000-0941 Page 11
Application No. 09/077,362
cited any evidence to support this conclusion, it appears to6
us that the examiner relied on impermissible hindsight in 7
reaching his obviousness determination. Since the "hang
freely" limitation is not taught or suggested by the applied
prior art, the decision of the examiner to reject claims 3 and
10 under
6Evidence 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., Inc. v. SGS Importers Int'l., Inc., 73
F.3d 1085, 1088, 37 USPQ2d 1237, 1240 (Fed. Cir. 1995), cert.
denied, 117 S. Ct. 80 (1996), 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), cert. denied, 119 S. Ct. 1804 (1999).
A broad conclusory statement regarding the obviousness of
modifying a reference, standing alone, is not "evidence." See
In re Dembiczak, 175 F.3d 994, 999, 50 USPQ2d 1614, 1617 (Fed.
Cir. 1999).
7The use of hindsight knowledge derived from the
appellant's own disclosure to support an obviousness rejection
under 35 U.S.C. § 103 is, of course, impermissible. See, for
example, W. L. Gore and Assocs., Inc. v. Garlock, Inc., 721
F.2d 1540, 1553, 220 USPQ 303, 312-13 (Fed. Cir. 1983), cert.
denied, 469 U.S. 851 (1984).
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