Appeal No. 2000-1961
Application 08/840,200
simply reach conclusions based on its own understanding or
experience ) or on its assessment of what would be basic
knowledge or common sense."); In re Dembiczak, 175 F.3d 994, 999,
50 USPQ2d 1614, 1617 (Fed. Cir. 1999) ("The range of sources
available [for motivation to combine] . . . does not diminish the
requirement for actual evidence."). While it is said that a
convincing line of reasoning why one of ordinary skill in the art
would have found the claimed invention obvious in light of the
teachings of the references is an alternative to an express or
implicit suggestion in the references, Ex parte Clapp,
227 USPQ 972, 973 (Bd. Pat. App. & Int. 1985), this statement was
never intended to mean that an invented plausible reasons for a
modification is what is meant by a convincing line of reasoning.
Nevertheless, as to this limitation, we believe the examiner's
reasoning is defendable based on the references themselves.
Hill is directed to a system for non-intrusively testing
check valves to determine inoperability or wear (e.g., col. 5,
lines 58-66; col. 11, lines 66-68). One of ordinary skill in the
art would have recognized that the comparison must be repeated at
intervals or the system would not work for its intended purpose
of detecting inoperability and wear over time. Appellants have
provided no logic as to why the comparison would not be repeated.
The rejection of claim 17 over Hill is sustained.
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