Appeal No. 2006-3032 6
Application No. 09/969,040
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, 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
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