Appeal No. 2001-0257 Page 8
Application No. 08/927,412
orthogonal axes consists of a line slanted at an angle with
regard to an edge of the plate. In the rejections under
35 U.S.C. § 103 before us in this appeal, it is the examiner's
position (answer, p. 4) that this limitation would have been
obvious at the time the invention was made to a person having
ordinary skill in the art. However, the examiner has not
provided any evidence as to why at the time the invention was2
made a person having ordinary skill in the art would have
modified the nonslanting orthogonal axes arrangement of the
punches taught by Varidel to arrive at the claimed subject
matter. Without such evidence, we cannot sustain the
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. 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).
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