Appeal No. 2002-0015 Page 5
Application No. 09/164,098
“[T]o establish obviousness based on a combination of the elements disclosed in
the prior art, there must be some motivation, suggestion or teaching of the desirability
of making the specific combination that was made by the applicants.” In re Kotzab, 217
F.3d 1365, 1370, 55 USPQ2d 1313, 1316 (Fed. Cir. 2000) (citing In re Dance, 160 F.3d
1339, 1343, 48 USPQ2d 1635, 1637 (Fed. Cir. 1998); In re Gordon, 733 F.2d 900, 902,
221 USPQ 1125, 1127 (Fed. Cir. 1984)). “[T]he factual inquiry whether to combine
references must be thorough and searching.” McGinley v. Franklin Sports, Inc., 262
F.3d 1339, 1351-52, 60 USPQ2d 1001, 1008(Fed. Cir. 2001). “This factual question . .
. [cannot] be resolved on subjective belief and unknown authority.” In re Lee, 277 F.3d
1338, 1343-44, 61 USPQ2d 1430, 1434 (Fed. Cir. 2002). “It must be based on
objective evidence of record.” Id. at 1343, 61 USPQ2d at 1434.
Here, the examiner fails to show objective evidence of the desirability of
replacing Tracy’s attendant with Driscoll’s biometrics recognition. His broad, conclusory
statement that such a replacement “allows for a more secure system without the human
element of Tracy,” (Examiner’s Answer at 5), is not evidence. More specifically, the
examiner proffers no evidence that “self-checkout system[s],” Tracy, col. 6, ll. 53-54,
suffer from a lack of security. Nor is there evidence that “biometric method[s] of
personnel identification,” Driscoll, col. 1, l. 14, were used in shopping or checkout
applications.
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