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Ex parte IWAMURO - Page 4
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Board of Patent Appeals and Interferences > 1997 > Ex parte IWAMURO - Page 4
Appeal No. 95-4159
Application 08/151,055
arguments set forth in the brief along with the examiner's
rationale in support of the rejection and arguments in
rebuttal set forth in the examiner's answer.
It is our view, after consideration of the record
before us, that the collective evidence relied upon and the
level of skill in the particular art would not have suggested
to one of ordinary skill in the art the obviousness of the
invention as set forth in claims 1-3, 6 and 7. Accordingly,
we reverse.
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), and to provide a reason why
one having ordinary skill in the pertinent art would have been
led to modify the prior art or to combine prior art references
to arrive at the claimed invention. Such reason must stem
from some teaching, suggestion or implication in the prior art
as a whole or knowledge generally available to one having
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Last modified: November 3, 2007
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