Appeal No. 2005-0743
Application No. 09/351,723
We are constrained to reverse the outstanding rejections because
initially there is no evidence before us of this 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 1435.
See Smiths Indus. Med. Sys., Inc., v. Vital Signs, Inc., 183 F.3d 1347,
1356, 51 USPQ2d 1415, 1421 (Fed. Cir. 1999)(Bozek's reference to
common knowledge "does not in and of itself make it so" absent evidence
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