Appeal No. 2003-1155 Page 5
Application No. 08/821,995
No. 25, mailed January 13, 2003). As a consequence of our review, we will not sustain
the rejection of claims 4 and 11 under 35 U.S.C. § 103 for the reasons that follow.
In rejecting claims under 35 U.S.C. § 103, the examiner bears the initial burden
of presenting a prima facie case of obviousness. See In re Rijckaert, 9 F.3d 1531,
1532, 28 USPQ2d 1955, 1956 (Fed. Cir. 1993). A prima facie case of obviousness is
established when the teachings of the prior art itself would appear to have suggested
the claimed subject matter to one of ordinary skill in the art. See In re Bell, 991 F.2d
781, 783, 26 USPQ2d 1529, 1531 (Fed. Cir. 1993).
The applied prior art (i.e., Malott and Di Palma) does not teach or suggest the
use of a 12-24 volt DC motor as recited in claims 4 and 11. While the examiner has
concluded that the use of a 12-24 volt DC motor as recited in claims 4 and 11 would
have been obvious at the time the invention was made to a person having ordinary skill
in the art, the examiner has not cited any evidence to support such conclusion as
requested by the appellants.3 When an applicant seasonably challenges a factual
3 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
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