Ex Parte Dathathraya - Page 4


               Appeal No. 2006-3120                                                                         
               Application No. 09/944,695                                                                   


               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.  See 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, 1039, 228 USPQ 685, 686 (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, 1052, 189 USPQ 143, 147 (CCPA 1976).  Only those arguments                        


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