Appeal No. 2003-1605
Application No. 08/982,934
(Answer, page 11) to buttress the obvious modification rationale by
relying on an unsupported assertion of “common knowledge” in the
art, it is well settled that “the Board cannot simply reach
conclusions based on it own understanding or experience - or on its
assessment of what would be basic knowledge or common sense.
Rather, the Board must point to some concrete evidence in the
record in support of these findings.” In re Zurko, 258 F.3d 1379,
1386, 59 USPQ2d 1693, 1697 (Fed. Cir. 2001). See also 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).
We note that, in the present factual situation before us, we
do not dispute the Examiner’s contention that the ultimate result
of including an informing program at a client processor would be
the ability to track user access to web pages. It is clear from
the record before us, however, that any suggestion to include such
an informing program at a client processor could come only from
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