Appeal No. 2000-2158
Application No. 08/741,226
teaches or shows this claimed mis-insertion inhibit groove. As
to this feature, the examiner takes Official Notice of it at the
bottom of page 4 of the answer asserting “that placing a mis-
insertion inhibit groove on a side of a cartridge that is
perpendicular to the inserting side of the cartridge is
notoriously old and well known in the art.” The examiner goes on
in the reasoning in the answer at pages 4 and 5 to conclude the
obviousness of combining that feature asserted to be old in the
art with Takahashi.
Even though the appellants do not contest this assertion in
the brief and reply brief, we are constrained to reverse the
outstanding rejections because there is no evidence before us of
this feature 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. We reach
this conclusion based upon 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, 1697 (Fed. Cir. 2001). See also In
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