Ex Parte TURNER et al - Page 12




          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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