Ex Parte Grover et al - Page 5



            Appeal No. 2006-2460                                                        Page 5              
            Application No. 09/966,620                                                                      

            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.                      

            See 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).                                                      









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