Appeal No. 2000-1244
Application 08/826,111
Dembiczak, 175 F.3d 994, 999, 50 USPQ2d 1614, 1617. “Mere
denials and conclusory statements, however, are not sufficient to
establish a genuine issue of material fact.” Dembiczak, 175 F.3d
at 999, 50 USPQ2d at 1617, citing McElmurry v. Arkansas Power &
Light Co., 995 F.2d 1576, 1578, 27 USPQ2d 1129, 1131 (Fed. Cir.
1993).
The Federal Circuit states that, “[t]he mere fact that the
prior art may be modified in the manner suggested by the Examiner
does not make the modification obvious unless the prior art
suggested the desirability of the modification.” In re Fritchi,
972 F.2d 1260, 1266 n.14, 23 USPQ2d 1780, 1783-84 n.14 (Fed. Cir.
1992), citing In re Gordon, 733 F.2d 900, 902, 221 USPQ 1125,
1127 (Fed. Cir. 1984). In addition, our reviewing court stated
in In re Lee, 277 F.3d 1338, 1343, 61 USPQ2d 1430, 1433 (Fed.
Cir. 2002), that when making an obviousness rejection based on
combination, “there must be some motivation, suggestion or
teaching of the desirability of making the specific combination
that was made by Applicant” (quoting In re Dance, 160 F.3d 1339,
1343, 48 USPQ2d 1635, 1637 (Fed. Cir. 1998).
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