Appeal No. 2003-0204 Page 6
Application No. 09/096,123
that was made by the appellant. See In re Dance, 160 F.3d 1339, 1343, 48 USPQ2d
1635, 1637 (Fed. Cir. 1998); In re Gordon, 733 F.2d 900, 902, 221 USPQ 1125, 1127
(Fed. Cir. 1984).
The motivation, suggestion or teaching may come explicitly from statements in
the prior art, the knowledge of one of ordinary skill in the art, or, in some cases the
nature of the problem to be solved. See Dembiczak, 175 F.3d at 999, 50 USPQ2d at
1617. In addition, the teaching, motivation or suggestion may be implicit from the prior
art as a whole, rather than expressly stated in the references. See WMS Gaming, Inc.
v. International Game Tech., 184 F.3d 1339, 1355, 51 USPQ2d 1385, 1397 (Fed. Cir.
1999). 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. See In re Keller, 642 F.2d
413, 425, 208 USPQ 871, 881 (CCPA 1981) (and cases cited therein). Whether the
examiner relies on an express or an implicit showing, the examiner must provide
particular findings related thereto. See Dembiczak, 175 F.3d at 999, 50 USPQ2d at
1617. Broad conclusory statements standing alone are not "evidence." Id. When an
examiner relies on general knowledge to negate patentability, that knowledge must be
articulated and placed on the record. See In re Lee, 277 F.3d 1338, 1342-45, 61
USPQ2d 1430, 1433-35 (Fed. Cir. 2002).
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