Appeal No. 2000-0354
Application No. 08/682,471
at the references cited, in particular Kikinis (US# 5502838)
which shows using temperature as a condition for reducing power.”
Since the examiner has never cited this reference in the answer
and has made no formal statement of rejection regarding it, we
will not consider its teachings and suggestions. “Where a
reference is relied on to support a rejection, whether or not in
a minor capacity, that reference should be positively included in
the statement of the rejection.” Manual of Patenting Examining
Procedure (MPEP) § 706.02(j). This portion relies upon In re
Hoch, 428 F.2d 1341, 1342 n.3, 166 USPQ 406, 407 n.3 (CCPA 1970).
We are constrained to reverse the outstanding rejection of
claims 2-20 because there is no evidence before us of the feature
of exceeding a threshold among the references relied upon by the
examiner in formulating the rejection. Essentially, we conclude
the examiner has not set forth a prima facie case of obviousness
as to these claims. We reach this conclusion buttressed by the
reasoning provided by recent cases from our reviewing court.
“[T]he Board cannot simply reach conclusions based on its own
understanding or experience - or on its assessment of what would
be basic knowledge or common sense. Rather, the Board must point
to some concrete evidence in the record in support of these
findings.” In re Zurko, 258 F.3d 1379, 1386, 59 USPQ2d 1693,
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