Appeal No. 2002-1672
Application No. 09/412,124
We further find that the Examiner, instead of pointing to
teachings in the Nakano and Baird references which might suggest
their combination, has improperly relied upon his own unsupported
allegations as to what would have been a “well known obvious
modification.” (Answer, page 10). See In re Lee, 277 F.3d 1338,
1344-45, 61 USPQ2d 1430, 1434-35 (Fed. Cir. 2002), in which the
court required evidence for the determination of unpatentability
by clarifying that the principles of “common knowledge” and
“common sense” may only be applied to analysis of evidence,
rather than be a substitute for evidence. The court has also
recently expanded their reasoning on this topic in In re Thrift,
298 F. 3d 1357, 1363, 63 USPQ2d 2002, 2008 (Fed. Cir. 2002).
Since it is our opinion, for all of the above reasons, that
the Examiner has not established a prima facie case of
obviousness, the 35 U.S.C. § 103(a) rejection of claims 1, 2, 4,
5, 12, 17, 19, 20, and 22 based on the combination of Nakano in
view of Baird is not sustained.
Turning to a consideration of the Examiner’s 35 U.S.C.
§ 103(a) rejections of dependent claims 3 and 13, in which
Mehring is added to the combination of Nakano and Baird, and of
dependent claims 7 and 14 in which Argade is added to the
combination of Nakano and Baird, we do not sustain these
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