Appeal No. 2006-2396
Application No. 10/293,133
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 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)].
The examiner has indicated how the invention of claims 6 and 7 is deemed to be
rendered obvious over the collective teachings of Roy and Smith [answer, page 6]. With
respect to claim 6, appellants argue that neither Roy nor Smith teaches that the tooling
feature comprises a formed tab as claimed. They assert that the tabs 154 of Smith are
used to maintain glass substrate 150 in position and there is no suggestion of using these
tabs to locate plates relative to each other [brief, pages 14-15]. The examiner responds
that Roy teaches that the plates must be aligned with respect to each other, and Smith
teaches that components can be joined together through the use of tabs that are suitably
positioned [answer, pages 10-11].
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