Appeal No. 2006-2011
Application No. 09/996,720
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, 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 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, 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
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