Ex Parte Yoakum - Page 4




           Appeal No. 2006-2574                                                                
           Application No. 10/331,706                                                          

           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.  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. Note 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.                        

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