Appeal No. 2006-1595
Application No. 09/798,484
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 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, 987-88, 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
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