Appeal No. 2006-0848
Application No. 09/981,231
the carriage 32 and is removable, then it has to have been removably placed on the
carriage. That is, it is removable from
the carriage. With respect to the grooves of claim 19, appellant’s arguments are
directed to Abe rather than Willis. We agree with the examiner that Willis teaches
grooves as claimed.
We now consider the various rejections of the claims under 35 U.S.C. § 103. 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.), 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.
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