Appeal No. 2001-0756 Page 4
Application No. 08/666,400
1265, 23 USPQ2d at 1783. “The factual inquiry whether to combine references
must be thorough and searching.” In re Lee, 277 F.3d 1338, 1343, 61 USPQ2d
1430, 1433 (Fed. Cir. 2002), quoting McGinley v. Franklin Sports, Inc., 262 F.3d
1339, 1351-52, 60 USPQ2d 1001, 1008 (Fed. Cir. 2001).
Moreover, it is improper for this board, and for that matter the examiner, to
hold claims upatentable for obviousness based solely on conclusory statements
about what is “common knowledge” or “well known” in the art, without objective
evidence in support of that knowledge. See Lee, 277 F.3d at 1344, 61 USPQ2d
at 1434-1435. On this record, there is no evidence directing a person of ordinary
skill in the art to the use of methanol instead of ethanol as is required in step A of
the claimed invention.
Since the examiner failed to establish a factual basis in the evidence to
support his conclusion that the teaching of ethanol/triethylamine renders obvious
the use of methanol/triethyl-amine for the reaction of squaric acid with amines we
are compelled to reverse the rejection of record.
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