Appeal No. 2006-0688
Application No. 09/838,425
61 USPQ2d at 1433-34. 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 complying with the burden of presenting a
prima facie case of obviousness. Note In re Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d
1443, 1444 (Fed. Cir. 1992). If that burden is met, the burden then shifts to the
applicant to overcome the prima facie case with argument and/or evidence.
Obviousness is then determined on the basis of the evidence as a whole and the
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