Appeal No. 2001-0280
Application No. 08/890,398
references relied on by the Examiner in formulating the
rejection. We conclude, therefore, based upon the reasoning
provided by recent cases from our reviewing court, that the
Examiner has not established a prima facie case of obviousness.
“[T]he Board cannot simply reach conclusions based on it 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 re Lee, 277 F.3d 1338, 1344-
45, 61 USPQ2d 1430, 1434-35 (Fed. Cir. 2002), in which the court
required evidence for the determination of unpatentability by
clarifying that the principles of “common knowledge” and “common
sense” may only be applied to analysis of evidence, rather than
be a substitute for evidence. The court has also recently
expanded their reasoning on this topic in In re Thrift, 298 F.3d
1357, 1363, 63 USPQ2d 2002, 2008 (Fed. Cir. 2002).
We are further of the view that even assuming, arguendo,
that the Examiner’s asserted well known aspects of automatic loan
repayment features were supported by evidence, there is no
indication from the Examiner as to how and in what manner the
disclosure of Cohen would be modified to arrive at the claimed
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