Appeal No. 2006-2952
Application No. 10/209,242
for the rejection. We have, likewise, reviewed and taken into consideration, in reaching
our decision, the appellants’ arguments set forth in the briefs along with the examiner’s
rationale in support of the rejection and arguments in rebuttal set forth in the examiner’s
answer.
It is our view, after consideration of the record before us, that the evidence relied
upon and the level of skill in the particular art would not have suggested to one of
ordinary skill in the art the obviousness of the invention as set forth in the claims on
appeal. Accordingly, we reverse.
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, 1433 (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 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
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