Appeal No. 2005-2753
Application No. 09/730,238
specifically the principle, known to one of ordinary skill, that suggests the
claimed combination.” [Footnote 8 to In re Rouffet omitted.]
“[P]articular findings must be made as to the reason the skilled artisan, with
no knowledge of the claimed invention, would have selected these
components for combination in the manner claimed.” [Footnote 9 to In re
Kotzab omitted.]
Appellant then generally argued that the “final Office Action has not cited clear and
particular evidence of record in support of a [or ‘this’] motivation to modify Herwig [and one
or more of the secondary references] as is required by In re Dembiczak and In re Lee”
(principal brief-pages 12, 14 (2 places), 15, and 16-17; similar language pages 16 and 25), or
the “final Office Action has not cited clear and particular evidence of record in support of
this [or ‘a’] motivation to combine Herwig [and one or more of the secondary references] as
is required by In re Dembiczak and In re Lee” (principal brief-pages 18, 19, 20 (2 places), 21,
22, 23 (2 places), 24, and 25) and is improperly using hindsight “contrary to In re
Dembiczak” (principal brief-pages 14, 16, 18, 20, 23, and 25) and cannot rely on common
sense alone to support a rejection “as this is contrary to In re Zurko” (principal brief, pages
18 and 23).
Thus, appellant’s briefs did no more than provide a boilerplate citation of case law
and then assert that the examiner’s rejection did not comply with that case law. That our
opinion did not discuss the cases does not mean that we overlooked or disagreed with the
more recent case law: the question is whether the obviousness conclusions in our opinion
were explained based on concrete evidence in the record. The request for rehearing does not
address the merits of the reasoning in our opinion. We do not disagree with any of the cited
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