Appeal No. 2006-1697
Application No. 10/400,998
of ordinary skill in the art the obviousness of the invention as set forth in the
claims on appeal. Accordingly, we affirm.
We first consider the rejection of claims 1, 2, 10, 17, and 18 under 35
U.S.C. § 103(a) as being unpatentable over Ko in view of Seiki. 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. 277 F.3d 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
4
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 Next
Last modified: November 3, 2007