Ex parte IWAMURO - Page 4




          Appeal No. 95-4159                                                          
          Application 08/151,055                                                      


          arguments set forth in the brief along with the examiner's                  
          rationale in support of the rejection and arguments in                      
          rebuttal set forth in the examiner's answer.                                
          It is our view, after consideration of the record                           
          before us, that the collective evidence relied upon and the                 
          level of skill in the particular art would not have suggested               
          to one of ordinary skill in the art the obviousness of the                  
          invention as set forth in claims 1-3, 6 and 7.  Accordingly,                
          we reverse.                                                                 
          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                   
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