Ex parte GOLDENBERG - Page 4




          Appeal No. 95-0206                                                          
          Application 07/866,789                                                      


          made no separate arguments with respect to any of the claims                
          within each group.  Accordingly, all the claims within each group           
          will stand or fall together.  Note In re King, 801 F.2d 1324,               
          1325, 231 USPQ 136, 137 (Fed. Cir. 1986); In re Sernaker, 702               
          F.2d 989, 991, 217 USPQ 1, 3 (Fed. Cir. 1983).  Accordingly, we             
          will only consider the rejection against claims 1 and 2 as                  
          representative of all the claims on appeal.                                 
          We consider first the rejection of claim 1 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           

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