Appeal No. 2000-1871 Page 16
Application No. 08/907,398
welding together of an outer synthetic continuous film sheet
to an inner synthetic continuous film sheet. Thus, there is
no teaching or suggestion in the applied prior art to arrive
at the subject matter of claim 26.
In the response to argument section of the answer, the
examiner determined (p. 4) in regard to claim 26 that it would
have been obvious to one having ordinary skill in the art at
the time the invention was made to form Moor's inner sheet as
a continuous film. However, no evidence has been cited by 2
the examiner to support this determination, especially since
2Evidence 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. See In re
Dembiczak, 175 F.3d 994, 999, 50 USPQ2d 1614, 1617 (Fed. Cir.
1999).
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