Appeal No. 2006-2406 Παγε 5
Application No. 10/745,113
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 relative
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