Appeal No. 2006-3077
Application No. 09/911,912
ordinary skill in the art suggests the claimed subject matter. In re Fine, 837
F.2d 1071, 1074, 5 USPQ2d 1596, 1598 (Fed. Cir. 1988). Only if this initial
burden is met does the burden of coming forward with evidence or argument
shift to the Appellants. Oetiker, 977 F.2d at 1445, 24 USPQ2d at 1444. See
also Piasecki, 745 F.2d at 1472, 223 USPQ at 788. 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. However, 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, 1316-17 (Fed. Cir. 2000). See also In re Thrift,
298 F.3d 1357, 1363, 63 USPQ2d 2002, 2008 (Fed. Cir. 2002).
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