Appeal No. 2006-0979
Application No. 08/818,185
We consider the obviousness of the following logical groups of claims,
as defined under separate subheadings [brief, page 6] and argued
separately by appellant in the brief:
GROUP I: Claims 1-9, 11, and 15-32 [brief, page 8].
GROUP II: Claims 33-36 and 39 [brief, page 12].
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
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