Appeal No. 2002-0617
Application 08/942,743
‘evidence.’” In re 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).
In addition, our reviewing court requires the PTO to make
specific findings on a suggestion to combine prior art
references. Dembiczak, 175 F.3d at 1000-01, 50 USPQ2d at 1617-19
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.”
We find that the Examiner has not rebutted Appellants’
assertions as to the lack of a code wheel. Some objective
teaching in the prior art is required. Appellants have placed in
dispute the facts set forth in the Examiner’s affidavit. The
“Pipe Dream” game appears to be available to the Examiner so that
the Examiner can establish exactly what the “Pipe Dream” is
through the use of objective documentary evidence. The Board
must assure that the requisite findings are made based on the
evidence of record. Therefore, we will not sustain the
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