Appeal No. 2006-1221
Application No. 09/846,995
decision, the Appellants’ arguments set forth in the briefs along with the examiner’s rationale
in support of the rejections and arguments in rebuttal set forth in the examiner’s answer.
It is our view, after consideration of the record before us, that the evidence relied
upon by the examiner does support the examiner’s rejections of claims 1, 2, 9, 10, 11, 18-20,
27, 29, and 31 but does not support the examiner’s rejections of claims 3-6, 8, 12-15, 17, 21-
24, 26, 28, and 30. Accordingly, we affirm-in-part.
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
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
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