Appeal No. 2003-0291 Page 6
Application No. 09/569,074
direction tangential to the membrane strictly via adhesive bonding with a tangential
force in a tension axis of the membrane. In the rejection under 35 U.S.C. § 103 based
on Hasegawa alone, the examiner made a determination (final rejection, p. 3) that this
difference would have been an obvious matter of design to an artisan since the
appellant has not disclosed the use of the claimed adhesive solves any stated problem
or is for any particular purpose and it appears that the invention would perform equally
well with other forms of attachments such as that taught by Hasegawa. However, this
determination of obviousness of the claimed subject matter has not been supported by
any evidence1 that would have led an artisan to have modified Hasegawa to arrive at
the claimed invention. While the appellant may not have specifically set forth that the
use of the claimed adhesive solves a stated problem (it is self-evident that the adhesive
is applied to restrain workpieces (i.e., is for a particular purpose)), such is not a fatal
flaw when the applied prior art fails to suggest the claimed subject matter. Likewise, the
mere fact that the claimed invention may perform equally well if the claimed adhesive
1 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. 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).
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