Appeal No. 2002-1511
Application No. 09/026,936
have not been attained in the instant case. To establish inherency, the extrinsic
evidence "must make clear that the missing descriptive matter is necessarily present in
the thing described in the reference, and that it would be so recognized by persons of
ordinary skill." In re Robertson, 169 F.3d 743, 745, 49 USPQ2d 1949, 1950-51 (Fed.
Cir. 1999) (citations omitted). We are not persuaded by the examiner that Barratt
necessarily must deny access. We are persuaded by appellant that the Section 102
rejection of each independent claim on appeal is in error. We thus do not sustain the
rejection of independent claims 1, 8, and 24 under 35 U.S.C. § 102 as anticipated by
Barratt.
35 U.S.C. § 103
“Deficiencies of the cited references cannot be remedied by the Board's general
conclusions about what is ‘basic knowledge’ or ‘common sense.’” In re Zurko, 258
F.3d 1379, 1385, 59 USPQ2d 1693, 1697 (Fed. Cir. 2001). Furthermore, "the Board's
findings must extend to all material facts and must be documented on the record, lest
the ‘haze of so-called expertise’ acquire insulation from accountability.” In re Lee, 277
F.3d 1338, 1345, 61 USPQ2d 1430, 1435 (Fed. Cir. 2002). Here, we find the
Examiner's arguments to be supported merely by the Examiner's own expertise instead
of the evidence of record and the teachings of prior art which are required in order to
establish a prima facie case of obviousness. Appellant relies on the lack of a teaching
5
Page: Previous 1 2 3 4 5 6 7 Next
Last modified: November 3, 2007