Appeal No. 2001-0729
Application No. 09/013,091
Examiner has merely found shopping lists containing the materials
claimed and has found no teaching which would suggest their
selection and use in the instant invention.”). When an
obviousness determination is based on a combination of prior art
references, there must be some “teaching, suggestion or incentive
supporting the combination.” In re Geiger, 815 F.2d 686, 688, 2
USPQ2d 1276, 1278 (Fed. Cir. 1987). “The 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). The Federal Circuit requires that the
Board’s decisions are supported by substantial evidence. Id.,
258 F.3d at 1381, 59 USPQ2d 1694. Thus the Board “must set forth
its findings and the grounds thereof as supported by the agency
record and explain its application of the law to the found
facts.” In re Lee, 277 F.3d 1338, 1344, 61 USPQ2d 1430, 1433-34
(Fed. Cir. 2002). In the present case, the examiner has simply
failed to make the requisite factual findings necessary to
support his conclusion of obviousness. See In re Zurko, 258
F.3d, 1379, 1386, 59 USPQ2d 1693, 1697 (Fed. Cir. 2001) (the
examiner must identify concrete evidence in the record in support
of his findings).
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