Ex Parte Cai - Page 6



         Appeal No. 2006-2707                                                       
         Application No. 09/749,792                                                 


         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, 55 USPQ2d 1313,            
         1316-17 (Fed. Cir. 2000).  See also In re Thrift, 298 F.3d 1357,           
         1363, 63 USPQ2d 2002, 2008 (Fed. Cir. 2002).                               
              An obviousness analysis commences with a review and                   
         consideration of all the pertinent evidence and arguments.  “In            
         reviewing the [E]xaminer’s decision on appeal, the Board must              
         necessarily weigh all of the evidence and argument.”  Oetiker,             
         977 F.2d at 1445, 24 USPQ2d at 1444.  “[T]he Board 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 agency’s conclusion.”  In re Lee, 277            
         F.3d 1338, 1344, 61 USPQ2d 1430, 1434 (Fed. Cir. 2002).                    
              With respect to representative claim 1, Appellant argues in           
         the Briefs that neither Georgiou nor McDermott teaches a                   
         performance demanding level input for determining the rate of              
                                         6                                          




Page:  Previous  1  2  3  4  5  6  7  8  9  10  11  12  13  14  15  Next 

Last modified: November 3, 2007