Appeal No. 2005-2753
Application No. 09/730,238
“computer power wire,” a “computer ground wire,” and a “plurality of signal wires.”
At pages 16-17 and 19-20 of the answer, the examiner specifically pointed out where
many of these limitations may be found in the combinations of Herwig, Flannery, and Kang
(with respect to claim 8) and Herwig and Flannery (with respect to claim 13), but the
examiner admitted that these combinations do not expressly teach a computer ground wire.
The examiner turned to Tsai for a teaching of a cable, pointing to cable system 300 in
Figure 1, and identifying (see page 17 and 19 of the answer) where Tsai discloses a device
power wire, device ground wire, computer power wire, a computer ground wire and a
plurality of signal wires.
The examiner then concluded that it would have been obvious to have implemented
the cable of Herwig, as modified by Flannery, or Flannery and King, using the cable system
teachings of Tsai, “for the advantage of providing a compact and clean wiring in said
housing, which is a [sic] common sense to one of ordinary skill in the art of electronics
wiring” (answer-pages 17, 20) (emphasis added).
Thus, the examiner appears to have relied, at least in part, on “common sense” of the
skilled artisan in reaching his conclusion of obviousness. Whereas Zurko and Lee warn
against the use of “common sense,” per se, in making a determination of obviousness, the use
of “common sense” is not precluded where evidence of record tends to support the allegation
of “common sense.” While the suggestion, teaching, or motivation to combine must be
based on objective evidence of record, rather than common knowledge or common sense, the
suggestion does not have to be expressly stated in the references, but may be implicit from
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