NOTE: Pursuant to Fed. Cir. R. 47.6, this disposition is not citable as precedent. It is a public record. 

## United States Court of Appeals for the Federal Circuit

04-1225 (Serial No. 07/636,839) IN RE BRUCE BEASLEY

________________________ DECIDED: December 7, 2004

________________________ Before LOURIE, Circuit Judge , ARCHER, Senior Circuit Judge , and DYK, Circuit Judge

. Opinion for the court filed by Circuit Judge LOURIE. Dissenti ng opinion filed by Circuit Judge DYK. LOURIE, Circuit Judge

. Bruce Beasley appeals from the decisi on of the United States Patent and Trademark Office (“PTO”) Board of Patent Appeals and Interferences affirming the rejection of claims 1-6 of U.S. Pat ent Application 07/636,839 as obvious under 35 U.S.C. § 103. Ex parte Beasley , Appeal No. 2001-2202, Paper No. 38 (B.P.A.I. Aug. 29, 2002) (“ Decision on Appeal ”); Ex parte Beasley , Appeal No. 2001-2202, Paper No. 40 (B.P.A.I. Oct. 27, 2003) (“ Decision on Request for Rehearing ”). Because the Board’s key factual findings relating to its obvious ness analysis are not supported by substantial evidence, the Board erred in concluding t hat the claims would have been obvious as a matter of law. We accordingly vacate and remand

.BACKGROUND On January 2, 1991, Beasley filed U.S. Pa tent Application 07/ 636,839 directed to the generation of images or ma rkings on a video display screen using a light pen, so as to point to or otherwise indicate information of interest. Representative claim 1 recites:
1. In a system for forming an image on a display screen scanned in frames by a beam: a light pen movable relative to the screen and having a light sensing element for providing a signal when the position of the light pen coincides with the position of the beam, a memory having a plurality of addressable storage locations, means for mapping the display screen into the memory on a pointby-point basis by sequentially addressing the memory locations in synchronization with the position of the beam to provide a one-to-one correspondence between the memory locations and the points on the screen, means responsive to the signal fr om the light pen for writing data into the memory at locations corres ponding to the position of the light pen on the screen during successive frames, means for reading the data out of t he memory locations as they are addressed, and means responsive to the data read out of the memory for producing an image corresponding to the points w here the light pen is positioned during successive frames. (emphases and paragraphing added). Previously, the ’839 application had been the subject of an appeal to this court, which affirmed the rejection of claims 1-6 under 35 U.S.C. §§ 102 and 103 in view of U.S. Patent 3,832,485 (“Pieters”). In re Beasley , No. 99-1055, 1999 WL 515480 (Fed. Cir. July 20, 1999) (nonprecedential) (“ Beasley I ”). 1 Beasley thereafter filed a Continued Prosecution Application, in whic h he amended independent claims 1 and 4 to

1 In Beasley I , claims 1, 3, 4, and 6 had been re jected as being anticipated by Pieters, and claims 2 and 5 had been rejected as being obvious in view of the same. Beasley I , 1999 WL 515480 at **1. Pieters is dire cted to an apparatus for creating delineations on images using, inter alia , a light pen. Pieters, abstract.

04-1225 2specifically include the feat ure of “mapping the display screen into the memory on a point-by-point basis . . . to provide a one-to-one correspondence” between the memory locations and the points on the screen (hereinafter referred to as the “point-by-point mapping limitation”). 2 Observing that Pieters, by itself, di d not disclose the point-by-point mapping limitation, the examiner rejected the amended claims for obviousness under § 103 in view of Pieters combined with either one of U.S. Patent 3,973,245 (“Belser”) or U.S. Patent 4,847,604 (“Doyle”). 3 The examiner cited Belser and Doyle as each disclosing “a conventional bit map memory mapping a display screen into the memory on a point by point basis,” and that “it would have been obvious to one of ordinary skill in the art to substitute Belser’s [or Doyle’ s] bit map memory” for the content addressable memory (“CAM”) used in Pieters. Jan. 7, 2000 Office Action at 2-3. A skilled artisan would have been motivated to make such a combination, alleged the examiner, “because image data stored in the bit map format can be read out rapidly.” Id.

2 In the prior appeal, Beasley argued that the point-by-point mapping limitation was to be read into independent clai ms 1 and 4, in an attempt to avoid anticipation by Pieter s. The court in Beasley I concluded that the language of the claims was not sufficiently na rrow to require this limitat ion to be read therein, and consequently affirmed the anticipation rejection. Beasley I , 1999 WL 515480 at **3. After amending the claims to expressly reci te the point-by-point mapping limitation, Beasley is now before us again. Although the point-by-point mapping limitation is cast in means-plus-function form, see 35 U.S.C. § 112, ¶ 6 (2000), the parties do not dispute whether any of the cited references discloses an equivalent structure. Accordingly, we need not identify or consider t he structures in Beasley’s application that correspond to that function. 3 Belser concerns a method and apparat us for “converting information in coded form into a dot matrix or raster form, ” Belser, col. 2, ll. 22-24, and presents in considerable detail an algorithm for reformatting data. Belser, col. 5, l. 23 through col. 9, l. 20. Doyle is directed to a system that allows a user to point to a feature on an image and cause descriptive information ( e.g. , text or a magnified view) to appear. Doyle, col. 11, l. 13 through col. 12, l. 18.

04-1225 3Beasley responded that the exami ner had failed to establish a prima facie case of obviousness because replacing the CAM in Pieters with the memori es in Belser and Doyle would require “a complete restructuri ng” of the system show n in Pieters, which was “not within the purview of obviousness.” Apr. 6, 2000 Resp. to Office Action at 2. Arguing that the cited references failed to provide any motivation for the combination, Beasley stressed that the examiner’s sugges tion for the substitution “appear[ed] to be based entirely on applicant’s own disclosure” in an attempt to “piece together” the prior art so as to render the claimed invention obvious. Id. Beasley criticized the rationale proffered by the examiner —that “data stored in a bit map format can be read out rapidly”—as “fall[ing] far short of the nec essary motivation for the combination.” Id. The examiner rejected Beasley’s arguments in a final office action, by repeating the substance of the Jan. 7, 2000 Office Action, and by further alleging that it was “well known in [the] computer disp lay art to substitute a bit map memory for a conventional memory such as the memory used by Piet ers.” Jun. 14, 2000 Offi ce Action at 4. Insisting that the “advantage of using . . . bit map memory over . . . conventional memory [was] well recognized,” the examiner listed three advantages: (1) increasing the display rate; (2) ensuring proper correlation of image locations with display locations; and (3) minimizing data processi ng and storage requirements. Id. In view of those “well recognized” advantages, reasoned the examiner, “it would have been obvious to one of ordinary skill” to make the substitution. Id. at 5.

04-1225 4Beasley appealed the final rejection to the Board, reiter ating his arguments against obviousness. The Board agreed wit h the examiner’s reasoning and affirmed 4 the rejection of claims 1-6. 5 Decision on Appeal at 8. The Board found that the cited references suggested to skilled artisans “that if more rapid readout of image data is desired, the bit map memory, rather than t he CAM of Pieters, should be employed.” Id. at 5-6. With respect to Beasley’s restru cturing argument, the B oard stated that “the artisan skilled in the image display and memo ry arts would have been well aware of the restructuring” involved when making the substitution. Id. at 6. Disagreeing with Beasley that the examiner’s proposed substitu tion of one memory type for another was “unsupported,” the Board r easoned that the “artisan w ould clearly have understood, from the applied references, t he different types of memories available (CAM versus bit map), and their comparative advantages, and would have chosen implementation of one over the other for the advantages sought.” Id. Concluding that the examiner established a prima facie case of obviousness, the Boar d sustained the rejection of claims 1-6. Beasley filed a request for reconsider ation, which the Board denied. Decision on Request for Rehearing at 5. Beasley timely appealed t he Board’s decision to this court, and we have jurisdiction pursuant to 28 U.S.C. § 1295(a)(4)(A).

4 To the extent the Board adopted the examiner’s position as its own, we shall refer to the examiner’s findings and conclusions as those of the Board. See In re Paulsen , 30 F.3d 1475, 1478 n.6 (Fed. Cir. 1994). 5 Our discussion will focus on independent cl aim 1, and, in particular, the point-by-point mapping limitati on. The only other independent cl aim is claim 4, which is directed to a method, but is otherwise sim ilar to independent claim 1 in all material respects. Since Beasley has not made separ ate patentability argument s for claim 4, or for any of the dependent claims, those claims will stand or fall together with claim 1. See In re Kaslow , 707 F.2d 1366, 1376 (Fed. Cir. 1983).

04-1225 5DISCUSSION A claimed invention may be found to have been obvious “if the differences between the subject matter sought to be patent ed and the prior art are such that the subject matter as a whole would have been obvi ous at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains.” 35 U.S.C. § 103(a) (2000). Whether an invention would have been obvious under § 103 is a question of law based on underlying findings of fact. In re Kotzab , 217 F.3d 1365, 1369 (Fed. Cir. 2000). We review the Board’s legal conclusion of obviousness de

novo , and its underlying factual determinati ons for substantial evidence. In re Gartside , 203 F.3d 1305, 1316 (Fed. Cir. 2000). Substantial evidence is “such relevant evidence as a reasonable mind might accept as adequate to support a conclusion.” Id. at 1312 (quoting Consolidated Edison Co. v. NLRB , 305 U.S. 197, 229 (1938)). On appeal, Beasley urges reversal on the bas is that the record does not support the Board’s determination that the examiner established a prima facie case of obviousness. For a prima facie case of obviousness to exist, there must be “some objective teaching in the prior art or . . . knowledge generally av ailable to one of ordinary skill in the art [that] would lead that individual to combine the relevant teachings of the references.” In re Fine , 837 F.2d 1071, 1074 (Fed. Cir. 1988). “The motivation, suggestion or teaching may come explicitly from statements in the prior art, the knowledge of one of ordinary skill in the art, or, in some cases the nature of the problem to be solved.” Kotzab , 217 F.3d at 1370. The presence or absence of a motivation to combine references is a question of fact, In re Dembiczak , 175 F.3d 994, 1000 (Fed. Cir. 1999) , which is evaluated under

04-1225 6the substantial evidence standard. Gartside , 203 F.3d at 1316. B easley contends that we have before us a case of impermissible hindsight reconstruction, in which the examiner’s finding of a motivation to substitu te the memory used in either Belser or Doyle for the CAM in Pieters rests on generalized statements of advantages without regard to the desirability or the feasibility of modifying Pi eters. Given the “subtle but powerful attraction of a hi ndsight-based obviousness analysis,” we require a “rigorous application of the requirement for a showing of the teaching or motivation to combine prior art references.” Dembiczak , 175 F.3d at 999. This is consonant with the obligation of the Board to develop an evidentiary basis fo r its factual findings to allow for judicial review under the substantial evidence standard that is both deferentia l and meaningful. See In re Lee , 277 F.3d 1338, 1344 (Fed. Cir. 2002). In evaluating the Board’s finding of motiva tion, we look to the record, for “all of the relevant information upon which the B oard relied in rendering its decision.” Gartside , 203 F.3d at 1314. “That reco rd, when before us, is closed, in that the Board’s decision must be justified within the four corners of that record.” Id. For the purposes of the present appeal, the record indicates that there have been no less than five occasions, since the filing of the Continued Prosecuti on Application with the amended claims, on which the Board and the examiner have had the opportunity to develop a factual record that establishes substantial evidence of a motivation to combine Pieters with either Belser or Do yle. They failed to do so in each instance. Our review of (1) the Jan. 7, 2000 Office Action; (2) the Jun. 14, 2000 Office Action; (3) the Feb. 13, 2001 Examiner’s Answer; (4) the Decision on Appeal ; and (5) the Decision on Request for Rehearing reveals that the assertions pertain ing to the advantages of one type of

04-1225 7memory over another that had been advanced by the examiner and the Board for the express purpose of showing motivation for the proposed substitution have been set forth without any supporting citations to relev ant portions of either Pieters, Belser, Doyle, or any other authority. For ex ample, the ex aminer’s allegati on in the Jan. 7, 2000 Office Action that “image data stored in the bit map format c an be read out rapidly” has been repeated axiomatically throughout the record in justifyi ng the replacement of t he CAM in Pieters. Neither the Board nor the ex aminer has identified in the record any source of information—either from the references cit ed or otherwise—from which they base their comparison of the relative speed advantages of “bit map memories” over CAMs. Similarly, the assertion in the Jun. 14, 2000 Office Action that the “ advantage of using . . . bit map memory over . . . conventi onal memory is well recognized” appears unaccompanied by any indication of its origins. 6 In adopting the examiner’s pos ition, the Board made no e ffort to substantiate the examiner’s assertions by invoking any ident ifiable authority. In stead, the Board relied on the examiner’s and its own knowledge as skilled artisans. For example, the Board claimed that “the secondary references” suggest ed to skilled artisans “that if more rapid readout of image data is desired, the bit map memory, rather than the CAM of Pieters,

6 While the abstract of Doyle was cited for the proposition that the use of “bit map memory” ensures proper correlation of image locations with display locations, and minimizes data processing and storage requirem ents, a closer inspection of Doyle reveals that these “advantages” arise out of a specific arrangem ent for encoding image information, rather than from any intrinsic characteristic of “bit map memories” in general. Doyle, col. 4, ll. 15-19 (“[T]he adv antages . . . stem from encoding information about a video image as a pixel bit map and a color map in which the addresses or indices of the color map are correlated wit h the addresses or point ers to strings of descriptive information about predefined features of the video image.”).

04-1225 8should be employed.” Decision on Appeal at 5-6. Similarly, in dismissing Beasley’s restructuring argument, the B oard alleged that a skilled artisan would have been “well aware” of the restructuring involved. Id. at 6. Under the MPEP provisions 7 in effect at the time, such generalized claims of what “the secondary references” teach and of what the skilled artisan would have been “w ell aware” fail to satisfy t he level of specificity that is required. Cf. Kotzab , 217 F.3d at 1371 (“[P]articular fi ndings must be made as to the reason the skilled artisan, wit h no knowledge of the claimed invention, would have selected these components for combination in the manner claimed.”). The MPEP provides guidelines for relying on offici al notice and personal knowledge, which the examiner did not follow in this case: The rationale supporting an obviousness rejection may be based on common knowledge in the art or “we ll-known” prior art. The examiner may take official notice of facts out side of the record which are capable of instant and unquestionable demonstration as being “well-known” in the art. In re Ahlert , 424 F.2d 1088, 1091, 165 USPQ 418, 420 (CCPA 1970) . . .

. . . When a rejection is based on facts within the personal knowledge of the examiner, the data should be stated as specifically as possible , and the facts must be supported, when ca lled for by the applicant, by an affidavit from the examiner. Such an a ffidavit is subject to contradiction or explanation by the affidavits of t he applicant and other persons. See 37 CFR 1.104(d)(2).

. . . For further views on official notice, see In re Ahlert , 424 F.2d 1088, 1091, 165 USPQ 418, 420-421 (CCPA 1970) (“ [A]ssertions of technical facts in areas of esoteric technology must always be supported by citation of some reference work” and “allegations concerning specific ‘knowledge’

7 The Manual of Patent Examini ng Procedure (“MPEP”) is commonly relied upon by patent examiners on procedural matters. Litton Sys., Inc. v. Whirlpool Corp. , 728 F.2d 1423, 1439 (Fed. Cir. 1984). “While t he MPEP does not have the force of law, it is entitled to judicial notice as an official interpretation of statut es or regulations as long as it is not in conflict therewith.” Molins PLC v. Textron, Inc. , 48 F.3d 1172, 1180 n.10 (Fed. Cir. 1995).

04-1225 9of the prior art, which might be peculia r to a particular art should also be supported.” . . . MPEP § 2144.03 (7th ed. 1998) (emphases added); see also MPEP § 2144.03 (7th ed., rev. 1, 2000). Certainly, the relative speed advantages of CAMs vis-à-vis “bitmap memories” and the feasibility of substituti ng one for the other can hardly be described as a fact that is of “ins tant and unquestionable demonstration” for the purpose of taking official notice unsupported by any citation. The record reflects that the exam iner and the Board have managed to find motivation for substituting one type of memory for another without prov iding a citation of any relevant, identifiable source of info rmation justifying such substitution. The statements made by the Exam iner, upon which the Board re lied, amount to no more than conclusory statements of generaliz ed advantages and convenient assumptions about skilled artisans. At least under the M PEP then in effect, such statements and assumptions are inadequate to support a finding of motivation, which is a factual question that cannot be resolved on “subj ective belief and unknown authority.” Lee , 277 F.3d at 1344. Under such ci rcumstances, with respect to core factual findings, “the Board must point to some concrete evidence in the record in support” of them, rather than relying on its assessment of what is “w ell recognized” or what a skilled artisan would be “well aware.” In re Zurko , 258 F.3d 1379, 1385-86 (Fed. Cir. 2001). “To hold otherwise would render the process of appellate review for substantial evidence on the record a meaningless exercise.” Id. at 1386 (citing Baltimore & Ohio R.R. Co. v. Aberdeen & Rockfish R.R. Co. , 393 U.S. 87, 91-92 (1968)). The PTO, perhaps realizing the deficiencies in the record in this regard, provides numerous citations in its brief to specific passages in Pieters, Belser, and Doyle in a

04-1225 10valiant attempt to muster substantiation fo r the Board’s findings. We cannot consider such post hoc attempts at bolstering the record in our review for substantial evidence. Burlington Truck Lines, Inc. v. United States , 371 U.S. 156, 168 (1962) (“[C]ourts may not accept appellate counsel’s post hoc rationalization for agency action.”). Our review must be limited to those grounds relied on and articulated by the Board; otherwise, the applicant may be deprived of a fair oppor tunity to support his position. See Lee , 277 F.3d at 1345; see also SEC v. Chenery Corp. , 332 U.S. 194, 196 (1947) (“[T]he court is powerless to affirm the administrative action by substituting what it considers to be a more adequate or proper basis.”).

CONCLUSION For the above reasons, we conclude t hat the Board’s determination that Beasley’s claimed invention would have been obv ious in view of the combination of Pieters with either Belser or Doyle is not supported by substantial evidence. Accordingly, we vacate the Board’s dec ision and remand for further proceedings not inconsistent with this opinion.

04-1225 11NOTE: Pursuant to Fed. Cir. R. 47.6, this disposition is not citable as precedent. It is a public record. 

## United States Court of Appeals for the Federal Circuit

04-1225 (Serial No. 07/636,839) IN RE BRUCE BEASLEY

DYK, Circuit Judge , dissenting. I respectfully dissent. Under our decision in Lee the Board may not rely on common knowledge and common sense in rejecting a claim as obvious. In re Lee , 277 F.3d 1338, 1344-45 (Fed. Cir. 2002). But both the exam iner and the Board are presumed to be skilled in the art, id. at 1345, as the majority recognizes, ante at 8. They may properly rely on that knowledge in making rejections for obviousness, but “when they rely on what they assert to be general knowledge to negate patentability, that knowledge must be articulated and placed on the record.” Lee , 277 F.3d at 1345. That is exactly what the exami ner and Board have done here. The patent examiner rejected Beasley’s claims as obvious over Pieters in view of either Besler or Doyle, finding a motivation to combine in the fact that “image data stored in the bit map format can be read out rapidly. ” Jan. 7, 2000 Office Action at 2. The examiner sustained his rejection in the subsequent Office Action and specifically addressed Beasley’s argument that there was no motivation to combine. The examiner noted that “[t]he advantage of using the bit map memory over the conventional memory is well recognized” and listed three advantages: (1) increasing the display rate; (2) ensuring proper correlation of image loca tions with display locations; and (3) minimizing data processing and storage requirem ents. June 14, 2000 Office Ac tion at 4. The Boardagreed with the reasoning of t he examiner and further found that an “artisan skilled in the image display and memory arts would hav e been well aware of t he restructuring and manners of address which would need to be changed in order to substitute one type of memory for another.” Ex parte Beasley , Appeal No. 2001-2202, Paper No. 38, at 6 (B.P.A.I. Aug. 29, 2002). I see no error in the Board’s reliance on the PTO’s own specialized knowledge. The effect is merely to create a prima facie case, and to shift the burden to the patent applicant. Here the applicant did not refute the factual findings of the Board and the patent examiner, but merely offered la wyer argument to contradict the Board’s findings. Under these circumst ances the application was properly rejected. With this said, I agree that the MPEP provis ion in effect at the time is not a model of clarity and can be read as recognizing onl y a very limited scope for the use of the PTO’s expertise. MPEP § 2144.03 (7th ed. 1998). However, the current version appears to allow greater latit ude. MPEP § 2144.03 (8th ed., rev. 2, 2004). In future cases, where the PTO has provided us with an interpretation of the new MPEP provisions, we will need to address the extent to which the new version of the MPEP gives the PTO greater scope to rely on its own expert knowledge.

04-1225 2