Appeal 2006-2033
Application 10/116,774
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,
1434 (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. 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. 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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