Appeal No. 2001-1008
Application No. 08/971,097
1614, 1617-19 (Fed. Cir. 1999). Our reviewing court states
further that the "factual question of motivation is material to
patentability, and could not be resolved on subjective belief and
unknown authority." In re Lee, 277 F.3d at 1344, 61 USPQ2d at
1434 (Fed. Cir. 2002). 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 USPQ 303, 312-13 (Fed. Cir. 1983).
We fail to find that the Examiner has provided the required
evidentially findings to support the Examiner's combination of
the prior art references of Wolfe and Nishimura. The Examiner
has instead provided conclusory statements and has not
established genuine issues of material fact. We note in the
Examiner's answer, the Examiner has provided reasons for the
combination but those reasons are only a repeat of what the
Appellant's disclosure has stated. The Examiner has not shown
that these reasons are established in the prior art.
The Examiner responds to the Appellant's arguments by
stating that it is proper for the Examiner to take in account the
knowledge which is within the level of ordinary skill in the art
at the time the invention is made. When the Federal Circuit was
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