Appeal No. 2006-1753
Application No. 09/732,037
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 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
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.
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