Appeal No. 2006-1221
Application No. 09/846,995
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 determined on the basis of
the evidence as a whole and the relative persuasiveness of the arguments. See Id.; In re
Hedges, 783 F.2d 1038, 1039, 228 USPQ 685, 686 (Fed. Cir. 1986); In re Piasecki, 745 F.2d
1468, 1472, 223 USPQ 785, 788 (Fed. Cir. 1984); and In re Rinehart, 531 F.2d 1048, 1052,
189 USPQ 143, 147 (CCPA 1976). Only those arguments actually made by appellants have
been considered in this decision. Arguments which appellants could have made but chose
not to make in the brief have not been considered and are deemed to be waived [see 37 CFR
§ 41.37(c)(1)(vii)(2004)].
We consider the obviousness of the following logical groups of claims, as argued
separately by Appellants:
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