Appeal No. 1996-1243
Application No. 08/226,224
claimed invention by forcing appellants to amend the claims to
additionally refer to graphs or cycles.
In summary, we do not agree with any of the examiner’s
objections of the claims, and we do not sustain the rejection
of all claims under 35 U.S.C. § 112.
We now consider the rejection of claims 27-30, 32, 33,
35-43 and 45-55 under 35 U.S.C. § 103. 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.
7
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