Ex parte YAZDY et al. - Page 5




          Appeal No. 1998-1800                                                        
          Application No. 08/430,453                                                  
               It is our view, after consideration of the record before               
          us, that the evidence relied upon and the level of skill in                 
          the particular art would not have suggested to one of ordinary              
          skill                                                                       




          in the art the obviousness of the invention set forth in                    
          claims 1-10.  Accordingly, we reverse.                                      
               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 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                  
                                          5                                           





Page:  Previous  1  2  3  4  5  6  7  8  9  10  11  12  13  14  Next 

Last modified: November 3, 2007