Appeal No. 2000-2158
Application No. 08/741,226
re Lee, 277 F.3d 1338, 1344-45, 61 USPQ2d 1430, 1434-35 (Fed.
Cir. 2002). The court in Lee requires evidence for the
determination of unpatentability by clarifying that “common
knowledge and common sense,” as mentioned in In re Bozek, 416
F.2d 1385, 1390, 163 USPQ 545, 549 (CCPA 1969), may only be
applied to analysis of the evidence, rather than be a substitute
for evidence. Lee, 277 F.3d at 1345, 61 USPQ2d at 1435. See
Smiths Indus. Med. Sys., Inc. v. Vital Signs, Inc., 183 F.3d
1347, 1356, 51 USPQ2d 1415, 1421 (Fed. Cir. 1999)(Bozek’s
reference to common knowledge “does not in and of itself make it
so” absent evidence of such knowledge).
Although we do not have before us an assertion of common
knowledge and common sense in the art as in In re Lee, the
examiner has made an analogous assertion that the feature of a
mis-insertion inhibit groove was notoriously old and well known
in the art. Correspondingly, the examiner’s assertion appears to
us to be a substitute for actual evidence to prove the examiner’s
assertion. More recently, however, the court expanded its
reasoning in In re Thrift, No. 01-1445 (Fed. Cir. Aug. 9, 2002).
Since the examiner has stated at the bottom of page 4 of the
answer that “placing a mis-insertion inhibit groove on a side of
a cartridge that is perpendicular to the inserting side of the
5
Page: Previous 1 2 3 4 5 6 7 Next
Last modified: November 3, 2007