Appeal No. 2007-0421
Application No. 10/151,635
Claims 20-34 and 36 stand rejected under 35 U.S.C. § 103. As evidence of obviousness,
the examiner offers Yang and Allport with regard to claims 20-24, 27, 34, and 36, adding Foster
with regard to claims 25, 29, and 30, but adding LoVasco with regard to claims 26 and 31-33.
With regard to claim 28, the examiner offers Yang, Allport, LoVasco and Walsh.
Reference is made to the briefs and answer for the respective positions of appellants and
the examiner.
OPINION
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,
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Last modified: November 3, 2007