Ex Parte Bollin et al - Page 4


               Appeal No. 2006-2789                                                                         
               Application No. 10/215,217                                                                   


               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 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               






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