Appeal No. 2002-0296 Page 10
Application No. 09/248,553
obvious to an artisan. However, this determination has not been supported by any
evidence that would have led an artisan to arrive at the claimed invention.5
In our view, the only suggestion for modifying either Sersiron or Leopold in the
manner proposed by the examiner to meet the above-noted limitation 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 the decision of the examiner to reject claims 1 and 3 to 6
under 35 U.S.C. § 103 is reversed.
5 Evidence 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. 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, 277 F.3d 1338, 1342-45, 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).
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