Appeal No. 2001-1635 Page 6
Application No. 09/294,873
2
not been supported by any evidence that would have led an artisan to arrive at the
3
claimed invention.
In our view, the only possible suggestion for modifying London in the manner
proposed by the examiner to meet the above-noted limitations stems from hindsight
knowledge derived from the appellant's own disclosure. The use of such hindsight
knowledge to support an obviousness rejection under 35 U.S.C. § 103 is, of course,
impermissible. See, for example, W. L. Gore and Assocs., Inc. v. Garlock, Inc., 721 F.2d
1540, 1553, 220 USPQ 303, 312-13 (Fed. Cir. 1983), cert. denied, 469 U.S. 851 (1984).
It follows that we cannot sustain the examiner's rejections of claims 1, 7 and 10.
2Evidence of a suggestion, teaching, or motivation to modify a reference may flow from the prior art
references themselves, the knowledge of one of ordinary skill in the art, or, in some cases, from the nature
of the problem to be solved, see Pro-Mold & Tool Co. v. Great Lakes Plastics, Inc., 75 F.3d 1568, 1573, 37
USPQ2d 1626, 1630 (Fed. Cir. 1996), Para-Ordinance Mfg., Inc. v. SGS Importers Int'l., Inc., 73 F.3d 1085,
1088, 37 USPQ2d 1237, 1240 (Fed. Cir. 1995), cert. denied, 117 S. Ct. 80 (1996), although "the suggestion
more often comes from the teachings of the pertinent references," In re Rouffet, 149 F.3d 1350, 1355, 47
USPQ2d 1453, 1456 (Fed. Cir. 1998). The range of sources available, however, does not diminish the
requirement for actual evidence. That is, the showing must be clear and particular. See, e.g., C.R. Bard
Inc. v. M3 Sys., Inc., 157 F.3d 1340, 1352, 48 USPQ2d 1225, 1232 (Fed. Cir. 1998), cert. denied, 119 S.
Ct. 1804 (1999). A broad conclusory statement regarding the obviousness of modifying a reference,
standing alone, is not "evidence." Thus, when an examiner relies on general knowledge to negate
patentability, that knowledge must be articulated and placed on the record. See In re Lee, xxx F.3d xxx,
xxx-xx, 61 USPQ2d 1430, 1433-35 (Fed. Cir. 2002). See also In re Dembiczak, 175 F.3d 994, 999, 50
USPQ2d 1614, 1617 (Fed. Cir. 1999).
3In our view, the combined teachings of the applied prior art at best would have made it obvious at
the time the invention was made to a person of ordinary skill in the art to have secured London's resilient
blocks 45 and 55 within their respective channels 40 and 50 with screws extending through apertures in the
side walls 42 and 52 of the channels.
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