Appeal No. 2006-1799
Application No. 10/269,955
OPINION
We have carefully considered the subject matter on appeal, the rejection
advanced by the Examiner and the evidence of obviousness relied upon by the
Examiner as support for the rejection. We have, likewise, reviewed and taken into
consideration, in reaching our decision, Appellants’ arguments set forth in the Briefs
along with the Examiner’s rationale in support of the rejection and arguments in rebuttal
set forth in the Examiner’s Answer.
It is our view, after consideration of the record before us, that the evidence relied
upon and the level of skill in the particular art would not have suggested to one of
ordinary skill in the art the obviousness of the invention as set forth in claims 21-34.
Accordingly, we reverse.
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
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