Appeal No. 2001-0397
Application 09/304,798
Both the suggestion and the reasonable expectation of success
must be founded in the prior art, not in the applicants’
disclosure. “[T]he factual inquiry whether to combine references
must be thorough and searching.” McGinley v. Franklin Sports,
Inc., 262 F.3d 1339, 1351-52, 60 USPQ2d 1001, 1008 (Fed. Cir.
2001).
In the present case, we are in agreement with
appellants that the examiner has simply failed to identify the
requisite teaching or suggestion in the prior art which would
have motivated one of ordinary skill in the art to have combined
the teachings of Turner and Wolf to achieve the claimed
invention. See In re Zurko, 258 F.3d 1379, 1386, 59 USPQ2d 1693,
1697 (Fed. Cir. 2001) (It is impermissible to reach conclusions
based on what the examiner believes to be basic knowledge or
common sense. The examiner must identify concrete evidence in
the record in support of his findings.) Thus, the examiner has
failed to establish a prima facie case of obviousness. See
Appeal Brief, page 7.
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