Appeal No. 2006-2574
Application No. 10/331,706
evidence of obviousness, the examiner offers Kishinsky and Zmolek
with regard to claims 36-38, 43-47, 52, and 53, adding Mengshoel
with regard to claims 41, 42, 50, and 51, but adding Busey with
regard to claims 39, 40, 48, and 49.
Reference is made to the briefs and answer for the
respective positions of appellant and the examiner.
OPINION
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. 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
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