Appeal No. 2001-0482
Application No. 09/186,078
OPINION
We have carefully considered the subject matter on appeal, the rejections advanced by the
Examiner and the evidence of obviousness relied upon by the Examiner as support for the
rejections. We have, likewise, reviewed and taken into consideration, in reaching our decision,
Appellants’ arguments set forth in the Briefs along with the Examiner’s rationale in support of the
rejections and arguments in rebuttal set forth in the Examiner’s Answer.
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
invention as recited in claims 1-21. We reach the opposite conclusion with respect to the
Examiner’s obviousness rejection of claims 22-35. Accordingly, we affirm-in-part.
Appellants’ arguments in response to the Examiner’s obviousness rejection of the appealed
claims are organized according to a suggested grouping of claims indicated at page 4 of the Brief.
We will consider the appealed claims separately only to the extent separate arguments for
patentability are presented. Any dependent claim not separately argued will stand or fall with its
base claim. Note In re King, 801 F.2d 1324, 1325, 231 USPQ 136, 137 (Fed. Cir. 1986); In re
Sernaker, 702 F.2d 989, 991, 217 USPQ 1, 3 (Fed. Cir. 1983).
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
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