Appeal No. 2006-1272
Application No. 10/104,615
in support of the rejection 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 rejection. Accordingly, we affirm.
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
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
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