Appeal 2007-0967
Application 10/367,001
within 35 U.S.C. § 103, the arguments are presented as if two separate
rejections of the claims under 35 U.S.C. § 102 are presented for our
consideration on appeal. The Brief and Reply Brief do not consider the
Examiner’s arguments of combinability or contest them.
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 must make the factual
determinations set forth in Graham v. John Deere Co., 383 U.S. 1, 17, 148
USPQ 459, 467 (1996). Furthermore, “‘there must be some articulated
reasoning with some rational underpinning to support the legal conclusion of
obviousness’ . . . . [H]owever, the analysis need not seek out precise
teachings directed to the specific subject matter of the challenged claim, for
a court can take account of the inferences and creative steps that a person of
ordinary skill in the art would employ.” KSR Int’l Co. v. Teleflex Inc., 127 S.
Ct. 1727, 1741, 82 USPQ2d 1385, 1396 (2007)(quoting In re Kahn, 441
F.3d 977, 988 (Fed. Cir. 2006)).
As compared with the Final Rejection, the Examiner’s statement of
the rejection at pages 3 through 6 of the Answer is an expanded analysis of
the rejection which has been further buttressed by the responsive arguments
at pages 6 through 8 of the Answer. Since we consider these positions of the
Examiner to be consistent with and follow the reasoning of the above noted
precedent, we sustain the rejection of all claims on appeal under 35 U.S.C.
§ 103.
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