Appeal No. 2002-0450
Application No. 09/142,814
relevant facts, assessing the significance of prior art, and making the ultimate
determination of the obviousness issue. Failure to do so is not consistent with either
effective administrative procedure or effective judicial review, examiners cannot rely on
conclusory statements when dealing with particular combinations of prior art and
specific claims, but must set forth the rationale on which they rely. See In re Lee, 277
F.3d 1338, 1343-1344, 61 USPQ2d 1430, 1433-1434 (Fed. Cir. 2002). Thus, it is
improper to rely on the “common knowledge and common sense” of a person of
ordinary skill in art to find an invention obvious over a combination of prior art
references, since the factual question of motivation to select and combine references is
material to patentability, and cannot be resolved on subjective belief and unknown
authority. In re Lee, 277 F.3d 1338, 1343-1344, 61 USPQ2d 1430, 1433-1434 (Fed.
Cir. 2002). In the present case, the examiner has not provided sufficient evidence to
show knowledge in the art of a material comprising a plurality of beads, wherein each
bead comprises a porous core of a first bioabsorbable material and a substantially non-
porous layer of a second bioabsorbable material around said core.
While we might agree with the examiner that both Silver and Arnold may support
the concept of providing diffusion layer or matrix upon a collagen sheet, we do not find a
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