Appeal No. 2004-2199
Application No. 09/896,043
bottom of page 3 of the answer where the examiner sets forth the
statement of the rejection of independent claims 1, 10 and 19 on
appeal. The examiner does not argue that the assertion is
considered to be inherent within Gulick and it is not apparent to
us that it is.
We are constrained to reverse the outstanding rejections
because there is no evidence before us of the alleged feature in
the reference relied upon by the examiner in formulating the
rejection. We reach this conclusion based upon the reasoning
provided by recent cases from our reviewing court. "[T]he Board
cannot simply reach conclusions based on its 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). The court in Lee requires
evidence for the determination of unpatentability by clarifying
that "common knowledge and common sense," as mentioned in In re
Bozek, 416 F.2d 1385, 1390, 163 USPQ 545, 549 (CCPA 1969), may
only be applied to analysis of the evidence, rather than be a
substitute for evidence. Lee, 277 F.3d at 1345, 61 USPQ2d at
3
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