Appeal No. 2006-1802 Page 3
Application No. 09/785,918
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, 78 USPQ2d 1329, 1336 (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). These showings by the examiner are an essential
part of complying with the burden of presenting a prima facie case of obviousness. Note
In re Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir. 1992). If that
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