Appeal No. 2005-1116 Page 9
Application No. 10/077,148
skill in the art to combine the relevant teachings of the references 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).
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. See In
re Kotzab, 217 F.3d 1365, 1370, 55 USPQ2d 1313, 1316-17 (Fed. Cir. 2000).
In this case, the examiner has not met the initial burden of presenting a prima
facie case of obviousness. In that regard, the examiner has not presented any
evidence whatsoever that would have led one of ordinary skill in the art to have modified
Yamagishi so as to arrive at the claimed invention. While the examiner may well be
correct that there is prior art establishing the obviousness of each limitation (i.e., a solid
core with a PGA compression of 55 or less; a polyurethane outer cover layer having a
4(...continued)
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. That is, the showing must be clear and particular. See, e.g., C.R.
Bard Inc. v. M3 Sys., Inc., 157 F.3d 1340, 1352, 48 USPQ2d 1225, 1232 (Fed. Cir.
1998), cert. denied, 119 S. Ct. 1804 (1999). 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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