Appeal No. 2003-1615
Application No. 09/274,639
the rejection is based on prior art or any other ground.
See In re Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d 1443,
1444 (Fed. Cir. 1992). We emphasize that the query under
35 U.S.C. § 112, second paragraph, is whether the claims do,
in fact, set out and circumscribe a particular area with a
reasonable degree of precision and particularity. In re
Moore, 439 F.2d 1232, 1235, 169 USPQ 236, 238 (CCPA 1971).
Here, the examiner has not explained how claims 9 and 13 are
deficient in this regard. We therefore reverse the
rejection.
II. The 35 U.S.C. § 103 rejection
We refer to pages 3-6 of the answer regarding the
examiner’s position of obviousness.
We note that the initial burden of presenting a prima
facie case of obviousness rests on the examiner. In re
Oetiker, 977 F.2d at 1445, 24 USPQ at 1444 (Fed. Cir. 1992).
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 conclusion
that it would have been obvious to modify the teachings of
the cited references to achieve the claimed invention. See
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