Appeal No. 2006-1685
Application No. 10/081,369
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
combined teachings, knowledge of one of ordinary skill in the
art, and the nature of the problem to be solved as a whole would
5
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 13 Next
Last modified: November 3, 2007