Appeal No. 2006-3182
Application No. 09/883,963
Examiner that claims 12 through 26 are properly rejected under 35 U.S.C. § 103 as being
unpatentable over the combination Lambropoulos, Bates and Ziemer. Accordingly, we reverse
the Examiner’s rejection of claims 12 through 26 for the reasons set forth infra.
I. Under 35 U.S.C. § 103, is the Rejection of Claims 12 through 26 as being
unpatentable over combinations of Lanbropoulos, Bates and Ziemer Proper?
In rejecting claims under 35 U.S.C. § 103, the Examiner
bears the initial burden of establishing a prima facie case of obviousness. In re Oetiker, 977
F.2d 1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir. 1992). See also In re Piasecki, 745 F.2d
1468, 1472, 223 USPQ 785, 788 (Fed. Cir. 1984). The Examiner can satisfy this burden by
showing that some objective teaching in the prior art or knowledge generally available to one of
ordinary skill in the art suggests the claimed subject matter. In re Fine, 837 F.2d 1071, 1074, 5
USPQ2d 1596, 1598 (Fed. Cir. 1988). Only if this initial burden is met does the burden of
coming forward with evidence or argument shift to the Appellants. Oetiker, 977 F.2d at 1445,
24 USPQ2d at 1444. See also Piasecki, 745 F.2d at 1472, 223 USPQ at 788. 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
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