Appeal No. 2001-1995
Application 08/646,567
indicated in Lee, 277 F.3d at 1343-44, 61 USPQ2d at 1433-34, the
examiner's finding of whether there is a teaching, motivation or
suggestion to combine the teachings of the applied references
must not be resolved based on "subjective belief and unknown
authority," but must be "based on objective evidence of record."
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 the
interchangeability of a data bus and an address bus in a computer
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
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