Appeal No. 2003-1539
Application No. 09/027,400
prima facie case. In re Piasecki, 745 F.2d 1468, 1471-72, 223
USPQ 785, 787-88 (Fed. Cir. 1984). The examiner must not only
identify the elements in the prior art or that knowledge
generally available to one of ordinary skill in the art would
lead the individual to combine the relevant teachings of the
references. In re Fine, 837 F.2d 1071, 1074, 5 USPQ2d 1596, 1598
(Fed. Cir. 1988).
The question of obviousness is “based on underlying factual
determinations including...what th[e] prior art teaches
explicitly and inherently...” In re Zurko, 258 F.3d 1379, 1386,
59 USPQ2d 1693, 1697 (Fed. Cir. 2001) (citing Graham v. John
Deere Co., 383 U.S. 1, 17-18, 148 USPQ 459, 467 (1966); In re
Dembiczak, 175 F.3d 994, 998, 50 USPQ 1614, 1616 (Fed. Cir.
1999); In re Napier, 55 F.3d 610, 613, 34 USPQ2d 1782, 1784 (Fed.
Cir. 1995)).
Moreover, “[d]eficiencies 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 at 1385, 59
USPQ2d at 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
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