Ex Parte DALLAS et al - Page 18




                Appeal No. 2002-0993                                                                               Page 18                     
                Application No. 09/368,781                                                                                                     


                         Evidence of a suggestion, teaching, or motivation to modify a reference may flow                                      
                from the prior art references themselves, the knowledge of one of ordinary skill in the                                        
                art, or, in some cases, from the nature of the problem to be solved, see Pro-Mold &                                            
                Tool Co. v. Great Lakes Plastics, Inc., 75 F.3d 1568, 1573, 37 USPQ2d 1626, 1630                                               
                (Fed. Cir. 1996), Para-Ordinance Mfg., Inc. v. SGS Importers Int'l., Inc., 73 F.3d 1085,                                       
                1088, 37 USPQ2d 1237, 1240 (Fed. Cir. 1995), cert. denied, 117 S. Ct. 80 (1996),                                               
                although "the suggestion more often comes from the teachings of the pertinent                                                  
                references," In re Rouffet, 149 F.3d 1350, 1355, 47 USPQ2d 1453, 1456 (Fed. Cir.                                               
                1998).  The range of sources available, however, does not diminish the requirement for                                         
                actual evidence.  That is, the showing must be clear and particular.  See, e.g., C.R.                                          
                Bard Inc. v. M3 Sys., Inc., 157 F.3d 1340, 1352, 48 USPQ2d 1225, 1232 (Fed. Cir.                                               
                1998), cert. denied, 119 S. Ct. 1804 (1999).  A broad conclusory statement regarding                                           
                the obviousness of modifying a reference, standing alone, is not "evidence."  Thus,                                            
                when an examiner relies on general knowledge to negate patentability, that knowledge                                           
                must be articulated and placed on the record.  See In re Lee, 277 F.3d 1338, 1342-45,                                          
                61 USPQ2d 1430, 1433-35 (Fed. Cir. 2002).  See also In re Dembiczak, 175 F.3d 994,                                             
                999, 50 USPQ2d 1614, 1617 (Fed. Cir. 1999).                                                                                    


                         Since there is no evidence in the rejection before us in this appeal that it would                                    
                have been obvious at the time the invention was made to a person of ordinary skill in                                          








Page:  Previous  10  11  12  13  14  15  16  17  18  19  20  21  22  23  24  Next 

Last modified: November 3, 2007