Appeal No. 2006-2374 Page 4
Application No. 10/164,670
outset that the appellants argue the claims as a group. Accordingly, we select claim
25 as representative of the group.
In rejecting claims under 35 U.S.C. § 103(a), the examiner bears the initial
burden of establishing a prima facie case of obviousness. In re Oetiker, 977 F.2d
1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir. 1992). See also In re Piasecki, 745
F.2d 1468, 1472, 223 USPQ 785, 788 (Fed. Cir. 1984). The examiner can satisfy
this burden by showing that some objective teaching in the prior art or that
knowledge generally available to one of ordinary skill in the art would lead that
individual to combine the relevant teachings of the references such that they would
teach or suggest the claimed subject matter. In re Fine, 837 F.2d 1071, 1074, 5
USPQ2d 1596, 1598 (Fed. Cir. 1988). It is incumbent upon the examiner to
establish a factual basis to support the legal conclusion of obviousness. See id. at
1073, 5 USPQ2d at 1598. 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, 1433 (Fed. Cir. 2002).
In particular, the examiner must show that there is a teaching, motivation, or
suggestion to combine references relied on as evidence of obviousness. Id. at
1343, 61 USPQ2d at 1433.
A suggestion, teaching, or motivation to combine the relevant prior art
teachings does not have to be found explicitly in the prior art. See e.g., In re Kahn,
441 F.3d 977, 987-88, 78 USPQ2d 1329, 1337-38 (Fed. Cir. 2006) (“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
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