Appeal No. 2006-3152 Page 3
Application No. 10/168,492
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 have suggested to one of ordinary
skill in the art the obviousness of the invention as set forth in claims 18-20, 23, 24, and
26-28. We reach the opposite conclusion with respect to claims 29-32 and 34-43.
Accordingly, we affirm-in-part.
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, 1433 (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 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
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