Appeal No. 2003-1510
Application No. 09/463,109
might interpret the express terms of claim 7 any differently from that as described in
appellant’s disclosure. Thus, while we may agree with the examiner to the extent that
an ignition switch could be considered, in a practical sense, to be capable of
immobilizing a vehicle, there is no showing that the artisan would consider an ignition
switch as functioning as the immobilizer of instant claim 7.
Even if the artisan were to have considered an ignition switch and an immobilizer
as functional equivalents, the rejection fails to point out any suggestion in Squires for
making the modification required by claim 7, and fails to otherwise provide evidence of
such a suggestion from the prior art. “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).
Obviousness is a question of law based on findings of underlying facts. See
Graham v. John Deere Co., 383 U.S. 1, 17-18, 148 USPQ 459, 467 (1966). We are
persuaded by appellant that the rejection fails to set forth the required evidentiary basis
for showing some suggestion from the prior art to make the proposed modifications to
the Squires device. Cf. In re Zurko, 258 F.3d 1379, 1386, 59 USPQ2d 1693, 1697
(Fed. Cir. 2001) (in a determination of unpatentability “the Board must point to some
concrete evidence in the record in support of...[the]...findings”).
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