Appeal No. 2002-2118 Page 14
Application No. 09/010,614
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). When obviousness is based on a single
prior art reference, there must be a showing of a suggestion or motivation to modify the
teachings of that reference to arrive at the claimed subject matter. See In re Kotzab,
217 F.3d 1365, 1370, 55 USPQ2d 1313, 1316-17 (Fed. Cir. 2000).
Since there is no evidence in the applied prior art2 suggesting that it would have
been obvious at the time the invention was made to a person of ordinary skill in the art
to have modified Ikesugi to arrive at the subject matter of claim 6, the decision of the
examiner to reject claim 6 under 35 U.S.C. § 103 is reversed.
CONCLUSION
To summarize, the decision of the examiner to reject claims 1 and 5 under
35 U.S.C. § 102(b) is reversed; the decision of the examiner to reject claims 1 and 5
2 The examiner's statement in the last paragraph on page 4 of the answer that claim 6 has been
rejected over Ikesugi in view of Official notice is incorrect. The rejection as set forth at the top of page 4 of
the answer relies solely on Ikesugi and does not take any Official notice.
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