Appeal 2006-2722
Application 10/209,626
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 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).
ANALYSIS
Appellants’ arguments in response to the obviousness rejection of
appealed claim 1 assert a failure by the Examiner to establish a prima facie
case of obviousness since, even if proper motivation for the proposed
combination were established, all of the claimed limitations would not be
taught or suggested by the applied prior art references. In particular,
Appellants contend (Br. 6; Reply Br. 6-7) that, in contrast to the claimed
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