Appeal No. 2001-0121 Page 11
Application No. 08/212,185
peculiar to a particular art should also be supported and the
appellant similarly given the opportunity to make a challenge. See
In re Spormann, 53 CCPA 1375, 363 F.2d 444, 150 USPQ 449
(1966). …
Typically, it is found necessary to take notice of facts which may be
used to supplement or clarify the teaching of a reference
disclosure, perhaps to justify or explain a particular inference to be
drawn from the reference teaching. The facts so noticed serve to
"fill in the gaps" which might exist in the evidentiary showing made
by the examiner to support a particular ground for rejection. We
know of no case in which facts judicially noticed comprised the
principal evidence upon which a rejection was based….
While a person of ordinary skill in the art may possess the requisite
knowledge and ability to modify the protocol taught by Fu, the modification is not
obvious unless the prior art suggested the desirability of the modification. In re
Gordon, 733 F.2d 900, 902, 211 USPQ 1125, 1127 (Fed. Cir. 1984).
Obviousness can only be established by combining or modifying the teachings of
the prior art to produce the claimed invention where there are some teachings,
suggestions, or motivations to do so found either in the references themselves or
in the knowledge generally available to one of ordinary skill in the art. See In re
Fine, 837 F.2d 1071, 1075, 5 USPQ2d 1596, 1598 (Fed. Cir. 1988).
On this record there is no suggestion in the prior art to modify Fu in a
manner to obtain appellants’ claimed invention. Instead, the only suggestion to
modify Fu comes from the examiner’s assertion that one of ordinary skill in the
art at the time the invention was made would have found it obvious to modify Fu
in a manner to obtain appellants’ claimed invention. In this regard, we note as
set forth in W.L. Gore & Associates, Inc. v. Garlock, Inc., 721 F.2d 1540, 1553,
220 USPQ 303, 312-13 (Fed. Cir. 1983):
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