Appeal No. 2002-0523
Application No. 09/117,918
procedure or effective judicial review, examiners cannot rely on conclusory statements
when dealing with particular combinations of prior art and specific claims, but must set
forth the rationale on which they rely. See In re Lee, 277 F.3d 1338, 1343-1344, 61
USPQ2d 1430, 1433-1434 (Fed. Cir. 2002). Thus, it is improper to rely on the
“common knowledge and common sense” of a person of ordinary skill in art to find an
invention obvious over a combination of prior art references, since the factual question
of motivation to select and combine references is material to patentability, and cannot
be resolved on subjective belief and unknown authority. In re Lee, 277 F.3d 1338,
1343-1344, 61 USPQ2d 1430, 1433-1434 (Fed. Cir. 2002). In other words, the
examiner must provide evidence that the claimed parameters or variables are known in
the prior art to be result effective variables.
In view of the above, the rejection of the claims for obviousness over Barsky in
view of Menz is reversed.
CONCLUSION
We reverse the rejection of claims 7-10, 13, 16-19, 22, 25 and 26 under 35
U.S.C. § 103(a) as obvious over Barsky in view of Menz.
7
Page: Previous 1 2 3 4 5 6 7 8 9 Next
Last modified: November 3, 2007