Appeal No. 2006-2452
Application No. 09/797,872
one of ordinary skill in the art the obviousness of the invention as set forth in
claims 1-9. Accordingly, we reverse.
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. 277 F.3d 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 conclusion. 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
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