Appeal No. 2004-0221
Application 09/320,149
(answer, pages 9 and 12). The examiner has provided no evidence,
however, that one of ordinary skill in the art would have
considered Gerhardt’s oval-shaped port for lubricating a thrust
bearing plate to be desirable for any combination of Egger’s
lubricant and carrier/holder surfaces.
The examiner argues that the width-wise coverage of
Gerhardt’s oval-shaped aperture would be the same as that of
Egger’s multiport structure (answer, page 10). Egger’s multiport
structure provides lubricant both in the direction of the carrier
and in the direction of the holder (figure 1). The examiner has
not established that the same or substantially the same coverage
would be provided by Gerhardt’s oval-shaped aperture.
The examiner argues that it would be a matter of common
sense that lubricant would move over surfaces around a port
regardless of whether the port is part of a rotating ring or a
stationary straight surface. This argument is not well taken
because “‘[c]ommon knowledge and common sense,’ even if assumed
to derive from the agency’s expertise, do not substitute for
authority when the law requires authority.” In re Lee, 277 F.3d
1338, 1345, 61 USPQ2d 1430, 1435 (Fed. Cir. 2002). Moreover,
even if lubricant flows around any port, the examiner has not
established that the flows around the oval-shaped aperture of
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