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Ex Parte Verbil et al - Page 6
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Board of Patent Appeals and Interferences > 2006 > Ex Parte Verbil et al - Page 6
Appeal No. 2006-3280
Application No. 09/874,152
obviousness. In re Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d 1443,
1444 (Fed. Cir. 1992). See also In re Piasecki, 745 F.2d 1468,
1472, 223 USPQ 785, 788 (Fed. Cir. 1984). The Examiner can
satisfy this burden by showing that some objective teaching in
the prior art or knowledge generally available to one of ordinary
skill in the art suggests the claimed subject matter. In re
Fine, 837 F.2d 1071, 1074, 5 USPQ2d 1596, 1598 (Fed. Cir. 1988).
Only if this initial burden is met does the burden of coming
forward with evidence or argument shift to the Appellants.
Oetiker, 977 F.2d at 1445, 24 USPQ2d at 1444. See also Piasecki,
745 F.2d at 1472, 223 USPQ at 788. 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.
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Last modified: November 3, 2007
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