Appeal No. 2006-1697
Application No. 10/400,998
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 1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir. 1992). If that
burden is met, the burden then shifts to the applicant to overcome the prima facie
case with argument and/or evidence. Obviousness is then determined on the
basis of the evidence as a whole and the relative persuasiveness of the
arguments. See Id.; In re Hedges, 783 F.2d 1038, 1039, 228 USPQ 685, 686
(Fed. Cir. 1986); In re Piasecki, 745 F.2d 1468, 1472, 223 USPQ 785, 788 (Fed.
Cir. 1984); and In re Rinehart, 531 F.2d 1048, 1052, 189 USPQ 143, 147 (CCPA
1976). Only those arguments actually made by appellant have been considered
in this decision. Arguments which appellant could have made but chose not to
make in the briefs have not been considered and are deemed to be waived [see
37 CFR § 41.37(c)(1)(vii)(2004)].
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