Appeal No. 2006-1628
Application No. 09/840,082
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, 987-88, 78
USPQ2d 1329, 1336 (Fed. Cir. 2006) citing In re Kotzab, 217 F.3d 1365, 1370,
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