Appeal No. 2000-1675
Application No. 08/855,279
magnetoresistive element sensing pattern would improve the
sensing characteristics does not adequately address the issue of
motivation to modify the applied prior art references. This
question of motivation is material to patentability, and can not
be resolved on subjective belief and unknown authority. The
Examiner must not only make requisite findings, based on the
evidence of record, but must also explain the reasoning by which
the findings are deemed to support the conclusion of obviousness.
See In re Lee, 277 F.3d 1338, 1343, 61 USPQ2d 1430, 1433-34 (Fed.
Cir. 2002). We are not inclined to dispense with proof by
evidence when the proposition at issue is not supported by a
teaching in a prior art reference, common knowledge or capable of
unquestionable demonstration. Our reviewing court requires this
evidence in order to establish a prima facie case. In re Knapp-
Monarch Co., 296 F.2d 230, 232, 132 USPQ 6, 8 (CCPA 1961); In re
Cofer, 354 F.2d 664, 668, 148 USPQ 268, 271-72 (CCPA 1966).
In view of the above discussion, since the Examiner has not
established a prima facie case of obviousness, the 35 U.S.C.
§ 103 rejection of independent claim 1, as well as claims 2-10
dependent thereon, is not sustained.
We note that the Examiner in the “Response to Argument”
portion at page 9 of the Answer, points to Japanese Patent
7
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 Next
Last modified: November 3, 2007