Appeal No. 2001-0313
Application 09/033,874
Like appellants (brief, pages 20-21), we see nothing in the
applied Arnhold reference which addresses the particular
additional steps as set forth in appellants’ claims 28, 32, 40
and 45 on appeal and likewise find the examiner’s reliance on the
assertion that such steps, and those of claim 48, are merely “old
and well known in the art,” or “a matter of duplication,” or “an
obvious matter of design choice,” or lacking in criticality, to
be entirely untenable, fraught with speculation and conjecture,
and completely without evidential support. When the examiner’s
conclusory assertions and unsupported opinions of obviousness
based on what was deemed to be old and well known in the art, or
matters of design choice, etc., were challenged by appellants, as
they were throughout the prosecution of this application, the
examiner was required to cite references in support of her
various positions. This the examiner has not done. In this
regard, it appears that the examiner has lost sight of the need
for establishing a prima facie case of obviousness and the need
for the applied reference or references to actually disclose,
teach or suggest the recited features of appellants’ claimed
subject matter, and for the applied prior art to provide some
suggestion or motivation for making the combination thereof so as
to result in the claimed subject matter in order to support a
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