Appeal No. 2005-0254 Page 6
Application No. 10/197,012
to one of ordinary skill in the art at the time the invention was made from the teachings
of Murison.
For the reasons set forth above, we conclude that the examiner's determination
of the obviousness of the one-piece printer ribbon spool limitation has not been
supported by any evidence6 that would have led an artisan to arrive at the claimed
invention. In our view, the only suggestion for modifying Murison in the manner
proposed by the examiner in the rejection before us in this appeal to meet the one piece
printer ribbon spool limitation stems from hindsight knowledge derived from the
appellant's own disclosure. The use of such hindsight knowledge to support an
obviousness rejection under 35 U.S.C. § 103 is, of course, impermissible. See, for
6 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).
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