Appeal No. 2006-3118
Application No. 10/144,884
F.3d 1338, 1342, 61 USPQ2d 1430, 1433 (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, 61 USPQ2d at 1433-34. 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. 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). These showings by the examiner are an essential part of
complying with the burden of presenting a prima facie case of obviousness.
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