Appeal No. 1999-0243
Application 08/434,457
Cir. 1999).
We are not inclined to dispense with proof by evidence when
the proposition at issue is not supported by a teaching in a
prior art reference or shown to be common knowledge of
unquestionable demonstration. Our reviewing court requires this
evidence in order to establish a prima facie case. In re
Piasecki, 745 F.2d 1468, 1471-72, 223 USPQ 785, 787-88 (Fed. Cir.
1984); In re Knapp-Monarch Co., 296 F.2d 230, 232, 132 USPQ 6, 8
(CCPA 1961); In re Cofer, 354 F.2d 664, 668, 148 USPQ 268, 271-72
(CCPA 1966). Furthermore, our reviewing court states in In re
Piasecki, 745 F.2d at 1472, 223 USPQ at 788 (Fed. Cir. 1984) the
following:
The Supreme Court in Graham v. John Deere Co., 383 U.S.
1 (1966), focused on the procedural and evidentiary
processes in reaching a conclusion under Section 103.
As adapted to ex parte procedure, Graham is interpreted
as continuing to place the "burden of proof on the
Patent Office which requires it to produce the factual
basis for its rejection of an application under section
102 and 103". Citing In re Warner, 379 F.2d 1011,
1020, 154 USPQ 173, 177 (CCPA 1967).
Turning first to Appellants' claim 63, we note that lines
7-9 of the preamble of this claim recite, "physical sector number
information provided by the storage system and not stored within
any of the plurality of sectors". Lines 1-4 of the first
6
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