Appeal No. 2000-1557
Application 08/384,456
With respect to claim 52, appellants argue that Blakeney
operates in the opposite manner from the claimed invention
[brief, page 9]. The examiner responds that Blakeney meets the
within portion of the claimed phrase “within or subsequent to”
[answer, pages 14-15]. We again agree with this interpretation
of the examiner. Since appellants have not responded to this
particular finding of the examiner, we sustain this rejection of
claim 52.
We now consider the rejections of the claims 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,
8
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