Ex Parte Verbil et al - Page 6



           Appeal No. 2006-3280                                                                      
           Application No. 09/874,152                                                                
           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 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.                            
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