Appeal 2007-1932
Application 11/066,550
properties in the context of lithography, a technology that Okazaki seeks to
distinguish as inferior in key respects to its intaglio printing invention.
Okazaki also discusses ink-jet printing as another technology that it seeks to
distinguish from its invention as inferior. The Examiner, in contrast, appears
to lump all printing technologies together, not only when citing Okazaki's
review of the fundamentals of lithography, but also when citing Duthaler's
teachings relating to ink jet technology.
There are at least two difficulties with the Examiner's position. First,
the Examiner has not come forward with any evidence supporting his
apparent position that the relevant arts regard all the different printing
technologies as equivalents for their teachings of desirable hydrophobic or
hydrophilic surface properties. Mere argument is insufficient to establish a
fact.7 Thus, the relevance, if any, of Duthaler, Teng, and Choy to the
obviousness rejection has not been established.
7 The dearth of citations to specific disclosures in the various references in
the Examiner's actions and in the Answer does not enhance the credibility of
the Examiner's findings of fact. The admonition that is so often directed by
this Board to counsel, namely, to provide specific cites for statements of
fact, applies equally to Examiners. We fully recognize the constraints of
time on both Examiners and prosecuting counsel; but permitting either to fail
to provide a reasonable indication of where a disclosure is to be found would
improperly shift the burden of coming forward with evidence. It is improper
to burden one side with finding the evidence that supports the other side's
argument. At the same time, we will not adopt a wooden approach to
decision-making, provided the argument and its basis can be reasonably
discerned from the briefing. Cf. In re Huston, 308 F.3d 1267, 1281 n.9, 64
USPQ2d 1801, 1810–11 n.9 (Fed. Cir. 2002) (explaining that affirmance is
appropriate despite "cryptic finding" when the record is as a whole supports
the findings); In re Hyatt, 211 F.3d 1367, 1371, 54 USPQ2d 1664, 1666–67
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