Appeal No. 2005-2500
Application No. 09/893,399
and that such a drawing device would be readily capable
and/or adaptable for drawing out trays . . . .
. . .
. . . One skilled in the art would have readily
appreciated that the drawing device would have guide
rails . . .
One skilled in the art would have readily
appreciated that in the above combination that either
the tray drawing device needs to be movable up and down
to remove each tray from the magazine or the vertical
rack must be movable up and down to position each tray
adjacent the tray drawing device . . . .
In other words, it is the examiner’s position that the “common
knowledge and common sense” of a person having ordinary skill in
the art would have motivated such person to employ the above
missing features in the manner claimed. See the Answer, pages 10
and 11. However, no factual evidence is supplied to support such
a position. In re Lee, 277 F.3d 1338, 1343-44, 61 USPQ2d 1430,
1434 (Fed. Cir. 2002) (“This factual question of motivation is
material to patentability, and could not be resolved on
subjective belief and unknown authority.”); W.L. Gore & Assoc. V.
Garlock, Inc., 721 F.2d 1540, 1553, 220 USPQ 303, 312-13 (Fed.
Cir. 1983)(“To imbue one of ordinary skill in the art with
knowledge of the invention in suit, when no prior art reference
or references of record convey or suggest that knowledge, is to
fall victim to the insidious effect of a hindsight syndrome
wherein that which only the inventor taught is used against its
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