Appeal No. 2007-0095
Application No. 09/843,566
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. 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. Note 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
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Last modified: November 3, 2007