Appeal No. 1999-1096
Application No. 08/556,746
that Takahashi is concerned with limiting the amount of
information written into the image memory, whereas substituting
motion pictures would require increasing the amount of
information written into memory.
Mankovitz discloses a program guide for use in future
recordings and not recording new indexing information as part of
a user recording. Thus, Mankovitz alone does not teach the
claimed invention. As to the examiner's motivation for
incorporating Mankovitz's motion images in Takahashi's indexing
system, i.e., "to increase the quality of the displayed images by
providing a more comprehensive imagery to the user," we find no
suggestion in either reference that more comprehensive imagery
would result from the combination nor that such would even be
desirable. The Court has held that:
With respect to core factual findings in a
determination of patentability, however, the Board
cannot simply reach conclusions based on its own
understanding or experience -- or on its assessment of
what would be basic knowledge or common sense. Rather,
the Board must point to some concrete evidence in the
record in support of these findings.
In re Zurko, 258 F.3d 1379, 1386, 59 USPQ2d 1693, 1697 (Fed. Cir.
2001). Thus, we cannot accept bald assertions with no evidence
to support them as motivation for modifying Takahashi.
Accordingly, the examiner has failed to establish a prima facie
of obviousness for claims 1 and 17. Therefore, we cannot sustain
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