Appeal No. 2002-1422 Page 4
Application No. 08/753,197
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 Daudelin’s “Voice and Data Switching Network,” Fig. 1, no. 12, with Gordon’s
“Global Internet System,” Fig. 5, no. 4, and “Access Node[s].” Id. at no. 6. Although the
latter reference does disclose that its “UniPost system . . . for providing a direct
telephone link using the data transmission network involving Internet,” col. 8, ll. 62-64,
“can thus provide [a] subscriber with a further cost advantage in completing his
international communications or other long distance communications,” col. 9, ll. 2-4, the
examiner proffers no evidence that Gordon’s UniPost system would provide such a cost
advantage when used to connect Daudelin’s “calling terminal 40,” col. 3, l. 67, with the
latter’s “directory assistance computer (DAS/C) 56. . . .” Col. 4, ll. 23-24. More
specifically, the examiner fails to show that connecting Daudelin’s calling terminal 40
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