Appeal No. 2006-2396
Application No. 10/293,133
We now consider the rejection of claim 13 as being anticipated by the disclosure of
Smith. The examiner has indicated how the invention of claim 13 is deemed to be fully
met by the disclosure of Smith [answer, page 5]. Appellants argue that Smith fails to
disclose the claimed spacer having a plurality of fingers. They assert that the
corrugations of spacer plates 170 in Smith are different from fingers [brief, pages 13-14].
The examiner responds that Smith clearly teaches a spacer having two fingers 170
coupled to the acoustic array when the term “fingers” is given its broadest reasonable
interpretation [answer, page 10].
We will sustain the examiner rejection of claim 13 for the reasons argued by the
examiner in the answer. Although appellants argue generally that the claimed invention
is not fully met by the disclosure of Smith, they never fully address the manner in which
the examiner has read the claimed invention on the disclosure of Roy. Therefore, we are
unpersuaded by appellants’ arguments that Smith fails to anticipate the claimed
invention.
We now consider the rejections of claims 6 and 7 under 35 U.S.C. § 103. 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, 1433 (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
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