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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