Appeal No. 2006-2895 Page 5
Application No. 09/971,469
suggestion to combine references relied on as evidence of obviousness. Id. at
1343, 61 USPQ2d at 1433.
A suggestion, teaching, or motivation to combine the relevant prior art
teachings does not have to be found explicitly in the prior art. See e.g., In re Kahn,
441 F.3d 977, 987-88, 78 USPQ2d 1329, 1337-38 (Fed. Cir. 2006) (“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. Id. at 987-88, 78 USPQ2d at 1336 (citing In re Kotzab, 217 F.3d
1365, 1370, 55 USPQ2d 1313 (Fed. Cir. 2000)).
These showings by the examiner are an essential part of complying with the
burden of presenting a prima facie case of obviousness. See Oetiker, 977 F.2d at
1445, 24 USPQ2d at 1444. Only if this initial burden is met does the burden of
coming forward with evidence or argument shift to the appellant. Id. at 1445, 24
USPQ2d at 1444. See also Piasecki, 745 F.2d at 1472, 223 USPQ at 788.
Obviousness is then determined on the basis of the evidence as a whole and the
relative persuasiveness of the arguments. See Oetiker, 977 F.2d at 1445, 24
USPQ2d at 1444; Piasecki, 745 F.2d at 1472, 223 USPQ at 788.
In the rejection of independent claim 1 under 35 U.S.C. § 103(a) as being
unpatentable over Anderson, the examiner determined that Anderson does not
disclose cutting both the reinforcing liner and the carton sheet. The examiner
found, however, that the cutting/slitting mechanism of Anderson is fully capable of
cutting both sheets and would do so if the adjustable slot cutters were not properly
aligned with the pre-cut slots in the carton sheets. Supp. Answer, p. 4. The
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