Appeal No. 2007-0421
Application No. 10/151,635
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 (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 evidence as a
whole and the relative persuasiveness of the arguments. See Id.; In re Hedges, 783 F.2d 1038,
1040, 228 USPQ 685, 687 (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, 1051, 189 USPQ 143, 146-147 (CCPA
1976). Only those arguments actually made by appellant have been considered in this decision.
Arguments which appellant could have made but chose not to make in the brief have not been
considered and are deemed to be waived [see 37 CFR § 41.37(c)(1)(vii) (2004)].
Turning first, to independent claim 20, the examiner finds that Yang describes the
claimed subject matter but for causing the data that functions to identify the appliance to be
uploaded from the remote controller having internet connectivity via a wide area communication
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Last modified: November 3, 2007