Appeal No. 1996-0288 Page 5
Application No. 07/873,634
The need for the USPTO to explicitly make of record the factual underpinnings
for a conclusion of obviousness was recently addressed by our appellate reviewing
court. As explained in In re Lee, 277 F.3d 1338, 1345, 61 USPQ2d 1430, 1434 (Fed.
Cir. 2002):
With respect to Lee's application, neither the examiner nor the Board
adequately supported the selection and combination of the Nortrup and
Thunderchopper references to render obvious that which Lee described.
The examiner's conclusory statements that "the demonstration mode is
just a programmable feature which can be used in many different devices
for providing automatic introduction by adding the proper programming
software" and that "another motivation would be that the automatic
demonstration mode is user friendly and it functions as a tutorial" do not
adequately address the issue of motivation to combine. This factual
question of motivation is material to patentability, and could not be
resolved on subjective belief and unknown authority. It is improper, in
determining whether a person of ordinary skill would have been led to this
combination of references, simply to "[use] that which the inventor taught
against its teacher." W.L. Gore v. Garlock, Inc., 721 F.2d 1540, 1553,
220 U.S.P.Q. (BNA) 303, 312-13 (Fed. Cir. 1983). Thus the Board must
not only assure that the requisite findings are made, based on evidence of
record, but must also explain the reasoning by which the findings are
deemed to support the agency's conclusion.
The court went on to state:
The determination of patentability on the ground of unobviousness is
ultimately one of judgment. In furtherance of the judgmental process, the
patent examination procedure serves both to find, and to place on the
official record, that which has been considered with respect to
patentability. The patent examiner and the Board are deemed to have
experience in the field of the invention; however, this experience, insofar
as applied to the determination of patentability, must be applied from the
viewpoint of "the person having ordinary skill in the art to which said
subject matter pertains," the words of section 103. In finding the relevant
facts, in assessing the significance of the prior art, and in making the
ultimate determination of the issue of obviousness, the examiner and the
Board are presumed to act from this viewpoint. Thus when they rely on
what they assert to be general knowledge to negate patentability, that
knowledge must be articulated and placed on the record. The failure to
do so is not consistent with either effective administrative procedure or
effective judicial review. The board cannot rely on conclusory statements
Page: Previous 1 2 3 4 5 6 7 8 Next
Last modified: November 3, 2007