Appeal No. 2003-0261
Application No. 09/126,203
available to one of ordinary skill in the art suggests the claimed subject matter. In re
Fine, 837 F.2d 1071, 1074, 5 USPQ2d 1596, 1598 (Fed. Cir. 1988). Only if this initial
burden is met does the burden of coming forward with evidence or argument shift to the
Appellants. Oetiker, 977 F.2d at 1445, 24 USPQ2d at 1444. See also Piasecki, 745
F.2d at 1472, 223 USPQ at 788.
An obviousness analysis commences with a review and consideration of all the
pertinent evidence and arguments. “In reviewing the [E]xaminer’s decision on appeal,
the Board must necessarily weigh all of the evidence and arguments.” Oetiker, 977
F.2d at 1445, 24 USPQ2d at 1444. “[T]he Board must not only assure that the requisite
findings are made, based on evidence of record, but must also explain the reasoning by
which the findings are deemed to support the agency’s conclusion.” In re Lee, 277
F.3d 1338, 1344, 61 USPQ2d 1430, 1434 (Fed. Cir. 2002).
When determining obviousness, “[t]he factual inquiry whether to combine
references must be thorough and searching.” Lee, 277 F.3d at 1343, 61 USPQ2d at
1433, citing McGinley v. Franklin Sports, Inc., 262 F.3d 1339, 1351-52, 60 USPQ2d
1001, 1008 (Fed. Cir. 2001). “It must be based on objective evidence of record.” Id.
“Broad conclusory statements regarding the teaching of multiple references, standing
alone, are not ‘evidence.’” In re Dembiczak, 175 F.3d 994, 999, 50 USPQ2d 1614,
1617. “Mere denials and conclusory statements, however, are not sufficient to
establish a genuine issue of material fact.” Dembiczak, 175 F.3d at 999, 50 USPQ2d
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