Appeal No. 2003-1046
Application 09/100,934
Examining Procedure MPEP § 2144.03 requires that when the
applicant seasonably challenges the cited well known facts the
burden is shifted to the Examiner to cite a specific reference of
those facts. Appellant has challenged the Examiner’s recitation
of the well known art. Appellant points out that no publication
or reference has been produced to support any aspects of what the
Examiner contends to be well known in the art. See page 10 of
the brief.
Appellant further argues that the limitations are not found
in the prior art publications or any factual examples of modular
arithmetic as relied on by the Examiner. Appellant argues that
the Examiner has taken Appellant’s teachings and found a theory
of mathematic that the Examiner believes explains the Appellant’s
invention. Appellant argues that this is improper.
When determining obviousness, “[t]he factual inquiry whether
to combine references must be thorough and searching.” In re
Lee, 277 F.3d 1338, 1343, 61 USPQ2d 1430, 1433 (Fed. Cir. 2002),
citing McGinley v. Franklin Sports, Inc., 262 F.3d 1339, 1351-52,
60 USPQ2d 1001, 1008 (Fed. Cir. 2001). “It must be based on
objective evidence of record” Id. “Broad conclusory statements
regarding the teaching of multiple references, standing alone,
6
Page: Previous 1 2 3 4 5 6 7 8 9 Next
Last modified: November 3, 2007