Appeal No. 2006-1359
Application No. 10/098,417
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
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
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