Appeal No. 2006-2418
Application No. 09/973,412
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 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
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