Appeal No. 2005-0743
Application No. 09/351,723
of such knowledge).
Although we do not have before us an assertion of common
knowledge and common sense in the art as in In re Lee, the examiner has
made an analogous assertion that the noted feature was well-known to be
used in the art. Correspondingly, the examiner's assertion appears to us to
be a substitute for actual evidence to prove the examiner's assertion. More
recently, the court expanded its reasoning in In re Thrift, 298 F.3d 1357,
1363-64, 63 USPQ2d 2002, 2007-08 (Fed. Cir. 2002).
The second reason we reverse this rejection is because part of the
examiner’s analysis in rejecting the claims under 35 U.S.C. § 103 has
improperly utilized a reference not formally part of the rejection. The
discussion at pages 9 and 10 of the responsive arguments portion of the
answer indicates that the examiner had originally cited the Kanevsky
reference in Paper No. 4, mailed on March 14, 2001, which was well before
the rejection was made in the final rejection, Paper No. 16, mailed on
December 2, 2002. In one of appellants’ succeeding attempted
amendments, Paper No. 20, filed on March 11, 2003, the examiner states
in the paragraph bridging pages 9-10 of the answer that appellants asked
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