Appeal No. 2004-0193 Page 11
Application No. 09/165,272
We agree. The teachings of the applied prior art (i.e., Riccardo) do not suggest more
than one guide member (i.e., Riccardo's shaft 7). The examiner's determination to
provide more than one guide member has not been supported by any evidence that
would have led an artisan to arrive at the claimed invention.3
With respect to claims 16 and 33, the appellant argues (supplemental brief, pp.
11-13) that Riccardo does not teach or suggest the claimed three guide member
supports since Riccardo teaches only two guide member supports (i.e., support
elements 5 and 6). We agree. In fact, the examiner's proposed modification of
Riccardo as set forth in the rejection under 35 U.S.C. § 103 (third Office action, p. 4)
does not even find that the claimed three guide member supports would have been
obvious at the time the invention was made to a person of ordinary skill in the art. As
such, the examiner has failed to establish a prima facie case of obviousness with
respect to claims 16 and 33. As to the examiner's belated attempt to establish the
3 When obviousness is based on a single prior art reference, there still must be a showing of a
suggestion or motivation to modify the teachings of that reference. See In re Kotzab, 217 F.3d 1365,
1370, 55 USPQ2d 1313, 1316-17 (Fed. Cir. 2000). 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." 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).
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 13 14 Next
Last modified: November 3, 2007