Appeal No. 2006-1785 Page 15
Application No. 10/768,827
Accordingly, because McLain teaches all that is claimed, we will sustain
the examiner’s rejection of independent claim 26 as being anticipated by
McLain.
IV. We consider next the examiner’s rejection of claims 1-8, 11, 13, 15-
19, 23, 24, 27-29, 32 and 34 as being unpatentable over the teachings of
Ryzl in view of McLain [answer, page 7].
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 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
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