Ex Parte Gonzalez et al - Page 6


               Appeal No. 2006-3039                                                                                                 
               Application No.  10/751,141                                                                                          
               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 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).   These                                   
               showings by the examiner are an essential part of complying with the burden of                                       
               presenting a prima facie case of obviousness.  See In re Oetiker, 977 F.2d 1443, 1445,                               
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