Appeal No. 2006-2172
Application No. 10/685,270
It is our view, after consideration of the record before us, that the evidence relied
upon and the level of skill in the particular art would not have suggested to one of ordinary
skill in the art the invention as set forth in claims 1-9. Accordingly, we reverse.
We also use our authority under 37 CFR § 41.50(b) to enter a new ground of rejection
of claims 6 and 7. The basis for these conclusions will be set forth in detail below.
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). 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
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