Appeal No. 2006-2460 Page 4
Application No. 09/966,620
It is our view, after consideration of the record before us that the
evidence relied upon by the examiner does not support the examiner’s
rejection of claims 1-7, 9, 10 and 12-23. 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,
1434 (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 F3d. 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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