Appeal No. 2006-2184
Application No. 09/819,427
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, 987-88, 78 USPQ2d 1329, 1336 (Fed. Cir. 2006) (citing In
re Kotzab, 217 F.3d 1365, 1370, 55 USPQ2d 1313, 1316-17 (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 burden is
met, the burden then shifts to the applicant to overcome the prima facie case with
argument and/or evidence. Obviousness is then determined on the basis of the
evidence as a whole and the relative persuasiveness of the arguments. See Id.;
In re Hedges, 783 F.2d 1038, 1039, 228 USPQ 685, 686 (Fed. Cir. 1986); In re
Piasecki, 745 F.2d 1468, 1472, 223 USPQ 785, 788 (Fed. Cir. 1984); and In re
Rinehart, 531 F.2d 1048, 1052, 189 USPQ 143, 147 (CCPA 1976). Only those
arguments actually made by appellants have been considered in this decision.
Arguments which appellants could have made but chose not to make in the brief
have not been considered and are deemed to be waived [see 37 CFR
§ 41.37(c)(1)(vii)(2004)].
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