Appeal No. 96-1349
Application 08/002,168
nothing about performing a logical bitwise AND operation on bits
of a data structure and a template structure. The examiner’s
response to appellant’s arguments is to simply repeat the
statements of the rejection.
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 cogent 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. denied, 475
9
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