Appeal No. 2006-3032 12
Application No. 09/969,040
At the outset, we note that to reach a proper conclusion under § 103,
the examiner, as finder of fact, must step backward in time and into the
mind of a person of ordinary skill in the art at a time when the invention was
unknown, and just before it was made. In light of all the evidence, we
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
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