Appeal No. 2006-1695
Application No. 10/649,277
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,
1317 (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
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