Appeal No. 2001-1618
Application No. 08/960,565
legal conclusion of obviousness. See In re Fine, 837 F.2d 1071,
1074, 5 USPQ2d 1596, 1598 (Fed. Cir. 1988). In so doing, the
examiner is required to make the factual determinations set forth
in Graham v. John Deere Co., 383 U.S. 1, 17-18, 148 USPQ 459, 467
(1966). Such determinations include the scope and content of the
prior art and differences between the prior art and the claims at
issue and a reason why one having ordinary skill in the pertinent
art would have been led to modify the prior art to arrive at the
claimed invention. Such reason must stem from some teaching,
suggestion or implication in the prior art as a whole or
knowledge generally available to one having ordinary skill in the
art. Uniroyal, Inc. v. Rudkin-Wiley, 837 F.2d 1044, 1052, 5
USPQ2d 1434, 1438 (Fed. Cir. 1988), cert. denied, 488 U.S. 825
(1988). "That knowledge can not come from the applicant's
invention itself." Oetiker, 977 F.2d 1443, 1447, 24 USPQ2d 1443,
1446 (Fed. Cir. 1992). Furthermore, a factual inquiry whether to
modify a reference must be based on objective evidence of record,
not merely conclusionary statements of the examiner. See In re
Lee, 277 F.3d 1338, 1343, 61 USPQ2d 1430, 1433 (Fed. Cir. 2002).
The examiner in the instant case admits (Answer, page 3)
that Brandt does not teach the spring contact being formed from a
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