Ex Parte Ahn et al - Page 10



            Appeal No. 2006-2922                                                      Page 10               
            Application No. 10/012,677                                                                      

            review the specific factual determinations of the examiner to ascertain                         

            whether the examiner has convincingly established that the claimed                              

            invention as a whole would have been obvious at the time of the invention to                    

            a person of ordinary skill in the art.  When claim elements are found in more                   

            than one prior art reference, the fact finder must determine “whether a                         

            person of ordinary skill in the art, possessed with the understandings and                      

            knowledge reflected in the prior art, and motivated by the general problem                      

            facing the inventor, would have been led to make the combination recited in                     

            the claims.” In re Kahn 441 F.3d at 988, 78 USPQ2d at 1337.  With respect                       

            to the role of the examiner as finder of fact, the Court of Appeals for the                     

            Federal Circuit has stated: “the examiner bears the initial burden, on review                   

            of the prior art or on any other ground, of presenting a prima facie case of                    

            unpatentability.” In re Oetiker,  977 F.2d at 1445, 24 USPQ2d at 1444. The                      

            Court of Appeals for the Federal Circuit has also noted: “[w]hat the prior art                  

            teaches, whether it teaches away from the claimed invention, and whether it                     

            motivates a combination of teachings from different references are questions                    

            of fact.” In re Fulton, 391 F.3d 1195, 1199-1200, 73 USPQ2d 1141, 1144                          

            (Fed. Cir. 2004) (internal citations omitted).                                                  













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