Appeal No. 2006-1728 Παγε 4
Application No. 10/337,417
examiner's rationale in support of the rejection and arguments in
rebuttal set forth in the examiner's answer.
Upon consideration of the record before us, we make the
determinations which follow. 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. at 1343. “The Board 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
Board 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
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