Ex Parte TURNER et al - Page 11




          Appeal No. 2000-1961                                                        
          Application 08/840,200                                                      

          it has been determined.  The rejection of claim 16 over Arcella             
          has not been shown to be in error.  The rejection of claim 16               
          over Arcella is sustained.                                                  


          Claims 17-19 and 21: Hill or Hale or Arcella                                
               Claim 17                                                               
               Claim 17 recites that "said comparison of on-line operating            
          characteristics and baseline data set operating characteristics             
          is repeated at selected intervals during the on-line operation of           
          said mechanism."  The examiner concludes that it would have been            
          obvious to monitor the valve at regular intervals because the               
          operating characteristics of a mechanism may change over time               
          (FR4).  Appellants argue that the examiner has not cited a                  
          reference to support this conclusion (Br7-8) and that where the             
          applicant traverses the taking of Official Notice, the examiner             
          should cite a reference in support of his or her position (Br9).            
               The examiner does not really take Official Notice of a fact,           
          so much as make a conclusion without providing any evidence in              
          support.  The case law generally requires that all material facts           
          be documented on the record to guard against hindsight.  See                
          In re Lee, 277 F.3d 1338, 1344-45, 61 USPQ2d 1430, 1434-35 (Fed.            
          Cir. 2002); In re Zurko, 258 F.3d 1379, 1386, 59 USPQ2d 1693,               
          1697 (Fed. Cir. 2001) ("With respect to core factual findings in            
          a determination of patentability, however, the Board cannot                 

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