Appeal No. 2006-3093 Page 7
Application No. 10/754,306
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, 24 USPQ2d 1443, 1444
(Fed. Cir. 1992). If that burden is met, the burden then shifts to the applicant to
overcome the prima facie case with argument and/or evidence. Obviousness is
then determined on the basis of the evidence as a whole and the relative
persuasiveness of the arguments. See Id.; In re Hedges, 783 F.2d 1038, 1039, 228
USPQ 685, 686 (Fed. Cir. 1986); In re Piasecki, 745 F.2d 1468, 1472, 223 USPQ
785, 788 (Fed. Cir. 1984); and In re Rinehart, 531 F.2d 1048, 1052, 189 USPQ
143, 147 (CCPA 1976).
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