Ex Parte FRIMOUT et al - Page 4



          Appeal No. 2002-2327                                                        
          Application No. 09/142,549                                                  

               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 Hospital Sys., Inc. v.                    
          Montefiore Hosp., 732 F.2d 1572, 1577, 221 USPQ 929, 933 (Fed.              
          Cir. 1984).  These showings by the Examiner are an essential part           
          tangible result until it is coupled with physical structure.  Although the  
          format of claims 9 and 10 would seem to raise a question as to whether such 
          claims set forth statutory subject matter under 35 U.S.C. § 101, we have no 
          such rejection before us, and we therefore decline to rule on the merits of 
          any such rejection.                                                         
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