Interference No. 104,681
Spears v. Holland
what that amounts to is an invitation for the board to look
through each of the cited references and come up with a theory on
which teachings from which references would be combined with each
other to render Holland's claims obvious. Party Spears is guilty
of major improper role-shifting and confuses the role of the
board with the role of counsel for the junior party. Let's
assume that indeed some combination of the prior art references
indeed may render Holland's claims 21 and 22 obvious, but party
Spears has not presented the story.
We do not know, according to Spears, how each of the cited
references differ from Holland's claims 21 and 22. We do not
know, according to Spears, which teaching from which reference is
being combined with which teaching from which other reference or
references to arrive at Holland's claims 21 and 22. We do not
know, what is the motivation for making the unknown combinations.
Moreover, the prior art referenced as that set forth in the
declaration of David Walker has not even been identified,
referred to, discussed, or explained in the body of the
preliminary motion. And to the extent that any story that should
have been told by Spears in its motion is presented in David
Walker's declaration, paragraph 13 of the Standing Order
prohibits incorporation of arguments by reference. The board
discussed that prohibition in detail in a precedential opinion in
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