Appeal No. 2006-1193 5
Application No. 09/961,036
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 stated in the references. 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. In re
Kahn, 441 F.3d 977, 987, 78 USPQ2d 1329, 1336 (Fed. Cir. 2006) citing In
re Kotzab, 217 F.3d 1365, 1370, 55 USPQ2d 1313 (Fed. Cir. 2000). See
also In re Thrift, 298 F. 3d 1357, 1363, 63 USPQ2d 2002, 2008 (Fed. Cir.
2002). These showings by the examiner are an essential part of complying
with the burden of presenting a prima facie case of obviousness. Note In re
Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir. 1992). If
that burden is met, the burden then shifts to the applicant to overcome the
prima facie case with argument and/or evidence. Obviousness is then
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