Appeal No. 2006-3093 Page 6
Application No. 10/754,306
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
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