Appeal No. 1998-1389 Page 9
Application No. 08/553232
Brotsky does not identify an image which is to be defined
during the rendering, pause the rendering, define the image
and then complete the rendering. Accordingly, we find that
Brotsky does not fully meet the limitations of claims 49 and
51.
Accordingly, the rejection of claims 49 and 51 under 35
U.S.C. § 102(e) is reversed.
We turn next to the rejection of claims 30-48, 50, 52,
and 53 under 35 U.S.C. § 103 as unpatentable over Brotsky in
view of Smith.
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
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