The record reflects that the examiner and the Board have managed to find motivation for substituting one type of memory for another without providing a citation of
any relevant, identifiable source of information justifying such substitution. The statements made by the Examiner, upon which the Board relied, amount to no more than conclusory statements of generalized advantages and convenient assumptions about skilled artisans. At least under the MPEP 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 "subjective belief and unknown authority."
"The Manual of Patent Examining Procedure ("MPEP") is commonly relied upon by patent examiners on procedural matters," the court noted. "While the MPEP does not have the force of law, it is entitled to judicial notice as an official interpretation of statutes 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)."
In dissent, Judge Dyk pointed to what he thought were sufficient statements by the Examiner that
"[t]he advantage of using the bit map memory over the conventional memory is well recognized" [with] three advantages: (1) increasing the display rate; (2) ensuring proper correlation of image locations with display locations; and
(3) minimizing data processing and storage requirements.
and by the Board that
"an artisan skilled in the image display and memory arts would have been well aware of the restructuring and manners of address which would need to be changed in order to substitute one type of memory for another."
The dissent was also quick to point out that the MPEP provision in effect at the time "is not a model of clarity" and "can be read as recognizing only a very limited scope for the use of the PTOâ€™s expertise." However, the current version of MPEP Â§ 2144.03 (8th ed., rev. 2, 2004) "appears to allow greater latitude."