Appeal No. 2006-3121
Application No. 10/165,083
forth in the briefs along with the examiner’s rationale in support of the rejections
and arguments in rebuttal set forth in the examiner’s answer.
It is our view, after consideration of the record before us, that the evidence
relied upon and the level of skill in the particular art would have suggested to one
of ordinary skill in the art the invention as set forth in the claims on appeal.
Moreover, we find that claim 31 is directed to non-statutory subject matter under
35 U.S.C. § 101. Accordingly, we affirm.
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 must articulate reasons for the examiner’s
decision. In re Lee, 277 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
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