Appeal No. 2002-0348
Application No. 09/176,416
It is reversible error when an examiner judicially notices a
feature as being old in the art and such is challenged and the
examiner fails to cite the well known thing on which he/she
relies. Ex parte Nouel, 158 USPQ 237 (PTO Bd. Of App 1967).
Throughout the answer, the examiner answers appellant’s
arguments by referring to the references’ teachings and what the
examiner “feels” [e.g., answer-page 18, lines 1 and 8],
“believes” [e.g., answer-page 21, line 7] and “is not deemed
necessary” [e.g., answer-page 12, lines 3-4]. The examiner
should be aware that feeling, believing and “deeming” does not
discharge him from the burden of providing the requisite factual
basis and establishing the requisite motivation to support a
conclusion of obviousness. The examiner’s reference to
unidentified phantom prior art techniques falls far short of the
mark. Ex parte Stern, 13 USPQ2d 1379 (PTO Bd. Of App 1987).
Since, on its face, the examiner’s statement of the
rejection of the claims (along with the rationale in support
thereof) fails to establish a prima facie case of obviousness, we
will not even get into a discussion of the specifics of the
applied references.
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