Appeal No. 2001-1342
Application 08/994,821
column 7, lines 39 through 42. We agree with the Appellants that
this portion of Berson is simply a teaching for the purpose of
showing that the light sources turned on and off will require a
change in the appearance of the indicia. However, we fail to
find that a fair reading of Berson provides any support to the
conclusion that the light sources may be alternately energized to
read and decode the first dataform and the second dataform as
claimed by Appellants.
Appellants further argue that the Examiner has not provided
substantial evidence of reasons why one of ordinary skill in the
art would make the proposed combination of Xu, Berson and Barkan.
See pages 20 through 21 of the brief and pages 10 and 11 of the
reply brief.
When determining obviousness, “[t]he factual inquiry whether
to combine references must be thorough and searching.” Lee, 277
F.3d at 1343, 61 USPQ2d at 1433, citing McGinley v. Franklin
Sports, Inc., 262 F.3d 1339, 1351-52, 60 USPQ2d 1001, 1008 (Fed.
Cir. 2001). “It must be based on objective evidence of record”
Id. “Broad conclusory statements regarding the teaching of
multiple references, standing alone, are not ‘evidence.’” In re
Dembiczak, 175 F.3d 994, 999, 50 USPQ2d 1614, 1617. “Mere
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