Ex Parte MURRAY et al - Page 9




          Appeal No. 2001-0073                                                        
          Application 08/966,894                                                      

          skill in the tubing connector art that a connector can be located           
          either in-line, as shown in Erickson, or on the container to                
          which the tubing goes, so as to make the use of either location             
          obvious, the examiner has presented no evidence of this fact (a             
          simple catalog page showing both types of connectors as                     
          alternative would have been sufficient).  Thus, the examiner has            
          failed to establish motivation for the proposed modification.  We           
          will not base a rejection on our own knowledge.  See 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 simply reach conclusions           
          based on its own understanding or experience -- or on its                   
          assessment of what would be basic knowledge or common sense.").             
               We do not agree with the examiner's reasoning that the                 
          fitting 66 in Erickson is part of the cartridge top panel via               
          tube 62 because this distorts the teachings of Erickson.                    
          Moreover, the tube 62 is permanently part of the cartridge and              
          violates the limitations of claims 22 and 26 that the interior of           
          the cartridge is devoid of ink supply tubing when the second                
          fitting is not mated with the cartridge fitting.                            
               While we agree that one skilled in the art would have known            
          to use known alternative fittings to the in-line seal 66 of                 
          Erickson, the examiner has not explained why one of ordinary                
          skill in the art would have been motivated to use the coupler in            

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