Appeal No. 2006-2975
Application No. 09/794,742
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).
An obviousness analysis commences with a review and
consideration of all the pertinent evidence and arguments. “In
reviewing the [E]xaminer’s decision on appeal, the Board must
necessarily weigh all of the evidence and argument.” Oetiker,
977 F.2d at 1445, 24 USPQ2d at 1444. “[T]he Board 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 agency’s conclusion.” In re Lee, 277
F.3d 1338, 1344, 61 USPQ2d 1430, 1434 (Fed. Cir. 2002).
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