Appeal No. 2006-2344
Application No. 10/408,890
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).
An obviousness analysis commences with a review and consideration of all the pertinent
evidence and arguments. “In reviewing the [E]xaminer’s decision on appeal, the Board must
necessarily weigh all of the evidence and argument.” Oetiker, 977 F.2d at 1445, 24 USPQ2d at
1444. “[T]he Board 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
agency’s conclusion.” In re Lee, 277 F.3d 1338, 1344, 61 USPQ2d 1430, 1434 (Fed. Cir.
2002).
With respect to representative claim 1, Appellants argue in the Appeal Brief and the
Reply Brief that the combination of Akimoto and Subramanian (without APA)4 does not teach a
measuring table having a cup-shaped wafer table with a rotary drive and a support edge with
adhesive material, wherein an alignment device is arranged in the interior of the wafer table and
4 We note that Appellants’ arguments are directed against the references individually, and improperly omit APA as
part of the rejections despite the fact that the Examiner relied primarily on APA as a base reference for the teaching
of many of the rejected claim limitations. Consequently, the opinion will address the rejections as formulated in the
final office action, and as reproduced in the Examiner’s Answer.
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