Appeal No. 1997-1236
Application No. 08/212,385
rejection. The disclosure of Li ’960 may only be used to
interpret language used in the claims of Li ’960. Since the
examiner has not made a proper obviousness analysis with
respect to each of the appealed claims, and since the examiner
has improperly relied on the disclosure of
Li ’960 as prior art, we will not sustain any of these
rejections
because the examiner has not met his initial burden of
presenting a prima facie case of unpatentability.
We now consider the rejection of claims 1-20 under
35 U.S.C. § 103 as being unpatentable over the teachings of
Keolian in view of Kiasaleh. 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
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