Appeal No. 2004-1750
Application No. 09/985,937
we observe that absent a reasonable factual basis in the prior
art applied against the claims for making a modification, the
examiner is not free to fill such a void by merely urging that
the absent teaching or suggestion is "a matter of common sense,"
or by contending that differences between the claimed subject
matter and the teachings of the references are "merely matters of
obvious minor variations," as the examiner has done in the
present case. It is never appropriate to rely solely on an
assertion of "common knowledge" or "common sense" in the art as
the principal evidence upon which an obviousness rejection is
based, without some clear and articulated evidentiary support in
the record. See, In re Zurko, 258 F.3d 1379, 1386, 59 USPQ2d
1693, 1697 (Fed. Cir. 2001). Since the examiner has not set
forth any rationale as to why the particular dimensions, sizes
and shapes of appellants' claimed invention can be "deemed to be
equivalent to or within the bound of the general teaching of
Reis" (answer, page 7), we will not sustain the examiner's
rejection of claims 3, 8, 9, 13 through 16 and 27 through 34 on
appeal under 35 U.S.C. § 103(a).
Concerning method claims 24 and 25 on appeal, we are of the
view that the recited methods would have been obvious to one of
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