Appeal No. 2000-0968 Page 6
Application No. 08/629,484
U.S. 1, 17, 148 USPQ 459, 467 (1966), and to provide a reason why
one having ordinary skill in the pertinent art would have been
led to modify the prior art or to combine prior art references to
arrive at the claimed invention. See also In re Rouffet, 149
F.3d 1350, 1355, 47 USPQ2d 1453, 1456 (Fed. Cir. 1998). Our
reviewing court requires this evidence in order to establish a
prima facie case. In re Piasecki, 745 F.2d 1468, 1471-72, 223
USPQ 785, 787-88 (Fed. Cir. 1984); In re Cofer, 354 F.2d 664,
668, 148 USPQ 268, 271-72 (CCPA 1966).
Additionally, motivation, suggestion or teaching may come
explicitly from statements in the prior art, the knowledge of one
of ordinary skill in the art, or, in some cases the nature of the
problem to be solved. See In re Dembiczak, 175 F.3d 994, 999, 50
USPQ2d 1614, 1617 (Fed. Cir. 1999). However, “the Board must not
only assure that the requisite findings are made, based on
evidence of record, but must also explain the reasoning by which
the findings are deemed to support the agency’s conclusion.” In
re Lee, 277 F.3d 1338, 1344, 61 USPQ2d 1430, 1434 (Fed. Cir.
2002).
With respect to representative claim 1, the Examiner
indicates that the only missing element from Jonker is “change
[sic] display format, or operation mode, in the freeze mode”
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