Appeal No. 2002-1024
Application 09/156,060
or per se rules of obviousness, is legally erroneous. See In re
Ochiai, 71 F.3d 1565, 1570, 37 USPQ2d 1127, 1132 (Fed. Cir.
1995); In re Wright, 343 F.2d 761, 769-70, 145 USPQ 182, 190
(CCPA 1965). The case law cited in the examiner’s answer
relating to the skill, knowledge and common sense of the artisan
is similarly unavailing. The examiner’s unsupported comments on
such factors are no substitute for the requisite evidence missing
in this case. See In re Lee, 277 F.3d 1338, 1345, 61 USPQ2d
1430, 1435 (Fed. Cir. 2002).
Thus, the examiner’s application of Stirling fails to
establish a prima facie case of obviousness with respect to the
subject matter recited in independent claims 1, 6 and 10.4
Consequently, we shall not sustain the standing 35 U.S.C.
§ 103(a) rejection of claims 1, 6 and 10, and dependent claims 2
through 5, 7 through 9 and 11 through 13, as being unpatentable
over Stirling.
4 This being so, it is not necessary to delve into the
merits of the appellant’s declaration evidence of non-
obviousness.
6
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