Appeal No. 2002-2318
Application 09/652,520
taken into consideration, in reaching our decision, the
appellants’ arguments set forth in the briefs along with the
examiner’s rationale in support of the rejection 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 does not support the
examiner’s rejection. 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, 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, 1051, 5 USPQ2d 1434, 1438 (Fed. Cir. 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. Montefiore
Hosp., 732 F.2d 1572, 1577, 221 USPQ 929, 933 (Fed. Cir.
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