Appeal No. 2006-1729
Application No. 10/107,628
Only if this initial burden is met does the burden of coming
forward with evidence or argument shift to the Appellants.
Oetiker, 977 F.2d at 1445, 24 USPQ2d at 1444. See also Piasecki,
745 F.2d at 1472, 223 USPQ at 788.
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, 78 USPQ2d
1329 (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).
An obviousness analysis commences with a review and
consideration of all the pertinent evidence and arguments. “In
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