Ex parte MUIRHEAD - Page 5




          Appeal No. 96-0750                                                          
          Application 07/944,561                                                      


          only consider the rejection against claim 1 as representative               
          of all the claims on appeal.                                                
          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 deter-               
          minations 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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