Appeal No. 2002-1960
Application No. 08/821,321
subtitle of Parks with Chippendale’s pen marking of a script
(answer, page 14).
The initial burden of establishing reasons for
unpatentability rests on the Examiner. In re Oetiker, 977 F.2d
1443, 1446, 24 USPQ2d 1443, 1445 (Fed. Cir. 1992). The Examiner
is expected to make the factual determination supported by
teaching in a prior art reference or shown to be common knowledge
of unquestionable demonstration, consistent with the holding in
set forth in Graham v. John Deere Co., 383 U.S. 1, 17, 148 USPQ
459, 467 (1966). Additionally, establishing that all elements of
a combination are known does not per se establish obviousness.
Smith Industries Medical Systems, Inc. v. Vital Signs, Inc., 183
F.3d 1347, 1356, 51 USPQ2d 1415, 1420-21 (Fed. Cir. 1999) (the
relevant inquiry is whether there is a reason, suggestion, or
motivation in the prior art that would lead one of ordinary skill
in the art to combine the teachings of the references). However,
“the Board 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
agency’s conclusion.” In re Lee, 277 F.3d 1338, 1344, 61 USPQ2d
1430, 1434 (Fed. Cir. 2002).
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