Appeal No. 1997-3842
Application No. 08/385,074
establish a prima facie case of obviousness. Therefore, we
cannot sustain the rejection of claims 1, 16, 25, and 36
through 38, nor their dependents, claims 2 through 10, 14, 15,
17 through 20, 22, 24, 26, 28 through 30, 35, and 39 through
44.
Regarding the rejection of claims 11 and 12 over Hirano
in view of Langlais, claims 11 and 12 ultimately depend from
claim 1 and therefore include all of the limitations of claim
1 found lacking from Hirano. Langlais fails to cure the
deficiencies of Hirano noted above. Accordingly, we cannot
sustain the rejection of claims 11 and 12.
As a side note, throughout the Answer, the examiner
states his opinion as to Hirano's disclosure. However, what
the examiner believes is not the standard for obviousness. 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,
1074, 5 USPQ2d 1596, 1598 (Fed. Cir. 1988). In so doing, the
examiner is required to make the factual determinations set
forth in Graham v. John Deere Co., 383 U.S. 1, 17-18, 148 USPQ
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