Appeal Number: 2006-0965
Application Number: 10/827,051
we do not agree with the examiner (Answer p. 3) that the recess at the bottom of
the surface 30 meets the claimed surface. Accordingly, we agree with appellants
(Brief, p. 3) that Vreeland fails to disclose the opposing language of claim 24.
From all of the above, we will not sustain the rejection of claim 24, or claims 25-
27 which depend therefrom, under 35 U.S.C. § 102(b).
We turn next to the rejection of claims 33 and 34 under 35 U.S.C. § 103(a)
as being unpatentable over Yates in view of Buchler. We note as background that
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. 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
7
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 13 14 Next
Last modified: September 9, 2013