Ex Parte ASAI et al - Page 5



          Appeal No. 2001-1509                                                         
          Application No. 08/871,890                                                   

               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 set forth in claims 5-24.                        
          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, 1073-74, 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,            
          17-18, 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,               
          1051, 5 USPQ2d 1434, 1438 (Fed. Cir.), cert. denied, 488 U.S. 825            
          (1988); Ashland Oil, Inc. v. Delta Resins & Refractories, Inc.,              
          776 F.2d 281, 293, 227 USPQ 657, 664 (Fed. Cir. 1985), cert.                 
          denied, 475 U.S. 1017 (1986); ACS Hosp. Sys., Inc. v.                        
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