Appeal No. 2003-1649 Page 7
Application No. 09/523,469
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." 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 the examiner has not presented evidence establishing it would have been
obvious at the time the invention was made to a person of ordinary skill in the art to
have modified Happ to arrive at the subject matter of claims 1 and 21, the decision of
the examiner to reject claims 1 and 21, and claims 2, 3 and 8 dependent hereon, under
35 U.S.C. § 103 is reversed.
Rejection based on Happ and Jarvis
We will not sustain the rejection of claims 4 to 7, 9 to 16, 19, 20 and 22 to 25
under 35 U.S.C. § 103 as being unpatentable over Happ in view of Jarvis.
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