Appeal No. 2004-0551 Page 17
Application No. 09/393,256
The appellant argues (brief, p. 13) that there is no reason to provide an
additional through channel or bore in the device of Weiland to route additional wire. We
agree.
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. 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). 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 to arrive at the
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