Appeal No. 2002-1185
Application No. 09/112,242
a factual basis supported by teaching in a prior art reference or
shown to be common knowledge of unquestionable demonstration.
The Examiner must not only identify the elements in the prior
art, but also show “some objective teaching in the prior art or
that knowledge generally available to one of ordinary skill in
the art would lead the individual to combine the relevant
teachings of the references.” In re Fine, 837 F.2d 1071, 1074, 5
USPQ2d 1596, 1598 (Fed. Cir. 1988). Even when obviousness is
based on a single prior art reference, there must be a showing of
a suggestion or motivation to modify the teachings of that
reference. In re Kotzab, 217 F.3d 1365, 1370, 55 USPQ2d 1313,
1316-17 (Fed. Cir. 2000), citing B.F. Goodrich Co. v. Aircraft
Breaking Sys. Corp., 72 F.3d 1577, 1582, 37 USPQ2d 1314, 1318
(Fed. Cir. 1996). Such evidence is required in order to
establish a prima facie case. In re Piasecki, 745 F.2d 1468,
1471-72, 223 USPQ 785, 787-88 (Fed. Cir. 1984).
A review of the applied prior art confirms that, as
acknowledged by the Examiner, the claimed third moveable guide,
the use of rack and pinion gear means and the specific width and
depth dimensions are absent in Leonhardt. However, as argued by
Appellants (reply brief, pages 9-11), Leonhardt provides no
disclosure or suggestion for employing the specific recited
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