Appeal No. 2006-1870 Παγε 4
Application No. 10/100,901
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
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