Appeal No. 2002-1640
Application No. 09/296,806
We also note that where 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). “[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). It is impermissible to conclude that an
invention is obvious based solely on what the examiner considers
to be basic knowledge or common sense.3 See In re Zurko, 258
F.3d 1379, 1386, 59 USPQ2d 1693, 1697 (Fed. Cir. 2001). Thus,
the burden is on the examiner to identify concrete evidence in
the record to support his conclusion that it would have been
obvious to modify the teachings of the cited references to
achieve the claimed invention. See id.; In re Kotzab, 217 F.3d
1365, 1370, 55 USPQ2d 1313, 1316-17 (Fed. Cir. 2000). In the
present case, as discussed above, the examiner has simply failed
to meet this burden.
Hence, we determine that the examiner has not set forth a
prima facie case of obviousness, and reverse the rejection.
3 For example, on page 5 of the answer, the examiner states that “applicant
chooses to ignore the common knowledge in the art that graphite (e.g.
pyrolytic graphite) is a form of carbon material used to shape high
temperature devices and objects”.
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