Appeal No. 2006-2461
Application No. 09/991,020
determine the device being tested (i.e., the user-selected device). Because
Akasheh discloses all claimed limitations, the examiner’s anticipation rejection of
claims 6, 13, and 23 is therefore sustained.
We next consider the rejection of claim 20 under 35 U.S.C. § 103(a) as
being unpatentable over Akasheh in view of appellant’s admitted prior art. 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. at
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
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