Appeal No. 2006-2225
Application No. 09/815,439
the art the obviousness of the invention as set forth in the claims on appeal. Accordingly,
we affirm.
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. 277 F.3d at 1343, 61 USPQ 2d at 1433-1434. 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
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