Appeal No. 2004-0024
Application No. 09/249,922 Page 4
In reaching our decision in this appeal, 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 and Declaration,
along with the examiner's rationale in support of the rejections
and arguments in rebuttal set forth in the examiner's answer.
Upon consideration of the record before us, we affirm-in-
part. We begin with the rejection of claim 1 under 35 U.S.C.
§ 103(a) as being unpatentable over Gaus in view of Cockram.
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
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