Appeal No. 2006-2789
Application No. 10/215,217
motivation, or suggestion of a motivation to combine references relied on as
evidence of obviousness. Id. at 1343, 61 USPQ2d at 1433-34. 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, 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). These
showings by the examiner are an essential part of complying with the burden of
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