Ex Parte Brown et al - Page 3




              Appeal No.  2006-1790                                                                                     
              Application No. 10/042,030                                                                                

                     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 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                    
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