Appeal Number: 2007-0385
Application Number: 10/375,067
In rejecting claims under 35 U.S.C. § 103, it is incumbent upon the
examiner to establish a factual basis to support the legal conclusion of obviousness.
See In re Fine, 837 F.2d 1071, 1073, 5 USPQ2d 1596, 1598 (Fed. Cir. 1988). In so
doing, the examiner is expected to make the factual determinations set forth in
Graham v. John Deere Co., 383 U.S. 1, 17, 148 USPQ 459, 467 (1966). The
examiner must articulate reasons for the examiner's decision. In re Lee, 277 F.3d
1338, 1342, 61 USPQ2d 1430, 1434 (Fed. Cir. 2002). In particular, the examiner
must show that there is a teaching, motivation, or suggestion of a motivation to
combine references relied on as evidence of obviousness. Id. at 1343. The
examiner cannot simply reach conclusions based on the examiner's own
understanding or experience - or on his or her assessment of what would be basic
knowledge or common sense. Rather, the examiner 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). Thus the examiner 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
examiner's conclusion. However, a suggestion, teaching, or motivation to combine
the relevant prior art teachings does not have to be found explicitly in the prior art,
as the teaching, motivation, or suggestion may be implicit from the prior art as a
whole, rather than expressly stated in the references. The test for an implicit
showing is what the combined teachings, knowledge of one of ordinary skill in the
art, and the nature of the problem to be solved as a whole would have suggested to
those of ordinary skill in the art. In re Kahn, 441 F.3d 977, 987, 78 USPQ2d 1329,
1336 (Fed. Cir. 2006) citing In re Kotzab, 217 F.3d 1365, 1370, 55 USPQ2d 1313
(Fed. Cir. 2000). See also In re Thrift, 298 F. 3d 1357, 1363, 63 USPQ2d 2002,
2008 (Fed. Cir. 2002). These showings by the examiner are an essential part of
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Last modified: November 3, 2007