Appeal No. 2006-1361
Application No. 09/997,019
the spread material having a planar surface. This does not occur until the spin-coating has
ended. Therefore, the condition of claim 10 that the spreading partially fills at least one
valley of the first material layer while leaving at least one peak of the first material layer
substantially uncovered by the spread material must also occur at the end of the spin-coating
process. The examiner’s rejection, however, requires that the spin-coating process of Wang
be looked at after it has begun but before it has finished. Therefore, we agree with appellants
that the operation of Wang fails to meet the invention as recited in claim 10.
With respect to claims 11-18, since these claims depend from claim 10, we also do not
sustain the examiner’s rejection of these claims.
We now consider the rejections of the claims under 35 U.S.C. § 103. 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, 61 USPQ2d at 1433-34. 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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