Ex Parte Winkler et al - Page 5



             Appeal No. 2006-3044                                                         Page 5               
             Application No. 10/285,939                                                                        

                   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                       







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