Appeal No. 2004-0713 Page 7
Application No. 09/900,256
the one-piece, monolithic component limitation as recited in claims 1 and 9. In that
regard, it is our determination that there is no evidence that the one-piece, monolithic
component limitation would have been obvious to one of ordinary skill in the art at the
time the invention was made from the teachings of the applied prior art (i.e.,Sonoda).
Moreover, the making of the torsion bar, the pinion gear and the valve sleeve as a one-
piece, monolithic structure produces a useful, beneficial result with regard to hydraulic
balancing as set forth in the brief (pp. 9-11) and reply brief (pp. 1-2).
For the reasons set forth above, we conclude that the examiner's determination
of the obviousness of the one-piece, monolithic component limitation has not been
supported by any evidence2 that would have led an artisan to arrive at the claimed
invention. In our view, the only suggestion for modifying Sonoda in the manner
proposed by the examiner to meet the above-noted limitation stems from hindsight
knowledge derived from the appellants' own disclosure. The use of such hindsight
2 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. 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 (such as making plural elements into a single-piece assembly), 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) and In re Dembiczak, 175 F.3d 994, 999, 50 USPQ2d 1614,
1617 (Fed. Cir. 1999).
Page: Previous 1 2 3 4 5 6 7 8 9 10 Next
Last modified: November 3, 2007