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Ex parte ROBIN K. ELKINS et al. - Page 4
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Board of Patent Appeals and Interferences > 1997 > Ex parte ROBIN K. ELKINS et al. - Page 4
Appeal No. 96-0069
Application 08/110,493
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
ordinary skill in the art. Uniroyal Inc. v. Rudkin-Wiley Corp.,
837 F.2d 1044, 1051, 5 USPQ2d 1434, 1438 (Fed. Cir.), cert.
denied, 488 U.S. 825 (1988); Ashland Oil, Inc. v. Delta Resins &
Refractories, Inc., 776 F.2d 281, 293, 227 USPQ 657, 664 (Fed.
Cir. 1985), cert. denied, 475 U.S. 1017 (1986); ACS Hospital
Systems, Inc. v. Montefiore Hospital, 732 F.2d 1572, 1577, 221
USPQ 929, 933 (Fed. Cir. 1984). These showings by the examiner
are an essential part of complying with the burden of presenting
a prima facie case of obviousness. Note In re Oetiker, 977 F.2d
1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir. 1992).
As indicated by the cases just cited, the examiner has at
least two responsibilities in setting forth a rejection under 35
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Last modified: November 3, 2007
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