Appeal No. 96-1705
Application No. 08/296,269
We now consider the alternative rejection of claims 8
and 9 under 35 U.S.C. § 103 as being unpatentable over the
teachings of Lim. 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
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 Hosp. Sys., Inc. v.
7
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