Appeal No. 2003-0493
Application No. 09/108,716
We do not find the examiner’s reasoning to be convincing. An obviousness
analysis commences with a review and consideration of all the pertinent evidence and
arguments. “In reviewing the [E]xaminer’s decision on appeal, the Board must
necessarily weigh all of the evidence and arguments.” In re Oetiker, 977 F.2d 1443,
1445, 24 USPQ2d 1443, 1444 (Fed. Cir. 1992). “[T]he Board must not only assure that
the requisite findings are made, based on evidence of record, but must also explain the
reasoning by which the findings are deemed to support the agency’s conclusion.” In re
Lee, 277 F.3d 1338, 1344, 61 USPQ2d 1430, 1434 (Fed. Cir. 2002). When
determining obviousness, “[t]he factual inquiry whether to combine references must be
thorough and searching.” Lee, 277 F.3d at 1343, 61 USPQ2d at 1433, 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,
are not ‘evidence.’” In re Dembiczak, 175 F.3d 994, 999, 50 USPQ2d 1614, 1617.
“Mere denials and conclusory statements, however, are not sufficient to establish a
genuine issue of material fact.” Dembiczak, 175 F.3d at 999, 50 USPQ2d at 1617,
citing McElmurry v. Arkansas Power & Light Co., 995 F.2d 1576, 1578, 27 USPQ2d
1129, 1131 (Fed. Cir. 1993). The Federal Circuit states that, “[t]he mere fact that the
prior art may be modified in the manner suggested by the Examiner does not make the
modification obvious unless the prior art suggested the desirability of the modification.”
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