Appeal No. 2006-1107
Application No. 09/382,442
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, 61 USPQ2d at 1433. 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
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