Appeal No. 2004-1543 Page 11
Application No. 09/303,991
that was made by the appellants. 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 In re Dembiczak, 175 F.3d 994, 999, 50
USPQ2d 1614, 1617 (Fed. Cir. 1999). 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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