Appeal 2006-2843
Application 09/872,970
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 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).
With respect to appealed independent claims 1 and 12, Appellants’
arguments in response to the obviousness rejection assert a failure by the
Examiner to establish a prima facie case of obviousness since all of the
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