Appeal No. 2003-1459 Page 4
Application No. 09/534,469
to arrive at the claimed invention. See In re Fine, 837 F.2d 1071, 1074, 5 USPQ2d
1596, 1598 (Fed. Cir. 1988) and In re Lintner, 458 F.2d 1013, 1016, 173 USPQ 560,
562 (CCPA 1972). 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. See In re Kotzab, 217 F.3d 1365, 1370, 55 USPQ2d 1313, 1316-17 (Fed.
Cir. 2000).
The applied prior art
Dockes' invention relates generally to production of compact discs (also known
as "CDS"), and more particularly to a system and method for production of customized
compact discs on demand. Dockes' system and method for production of customized
compact discs on demand includes acquisition means for acquiring audio data from a
plurality of commercial-quality CDS and converting the audio data to digital format;
mass storage means, coupled to the acquisition means, for storing the audio data in
digital format; indexing means for associating identification data uniquely attributable to
the plurality of commercial-quality CDS with their respective audio data in digital format;
1(...continued)
"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." Thus, when an examiner relies on general
knowledge to negate patentability, that knowledge must be articulated and placed on the record. 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).
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