Appeal No. 2001-0752
Application 09/084,680
phenylalkanoyl hydrazine. Id. According to the examiner, “[a]t
the time of the invention, it would have been obvious to a person
of ordinary skill in the art to combine the alkylhydroxyphenyl-
alkanoyl . . . of Keogh with the polyethylene based material of
Boysen . . . to prevent environmental degradation, reduce risk
of water penetration, provide good mechanical and electrical
properties and lower electrical dissipation.” Id., page 3.
Where an obviousness determination is based on a
combination of prior art references, there must be some
“teaching, suggestion or incentive supporting the combination.”
In re Geiger, 815 F.2d 686, 688, 2 USPQ2d 1276, 1278 (Fed. Cir.
1987). “[T]he factual inquiry whether to combine references must
be thorough and searching.” McGinley v. Franklin Sports, Inc.,
262 F.3d 1339, 1351-52, 60 USPQ2d 1001, 1008 (Fed. Cir. 2001).
It is impermissible to conclude that an invention is obvious
based solely on what the examiner considers to be basic knowledge
or common sense. See In re Zurko, 258 F.3d 1379, 1386, 59 USPQ2d
1693, 1697 (Fed. Cir. 2001). Thus, the burden is on the examiner
to identify concrete evidence in the record to support his con-
5
Page: Previous 1 2 3 4 5 6 7 8 9 Next
Last modified: November 3, 2007