Ex parte CARY R. CHAMPLIN - Page 4




          Appeal No. 97-2111                                                          
          Application 08/158,345                                                      


          respect to the invention as set forth in claims 21-25 and 27-31.            
          Accordingly, we affirm-in-part.                                             
          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           
          (1988); Ashland Oil, Inc. v. Delta Resins & Refractories, Inc.,             
          776 F.2d 281, 293, 227 USPQ 657, 664 (Fed. Cir. 1985), cert.                
          denied, 475 U.S. 1017 (1986); ACS Hospital Systems, Inc. v.                 
          Montefiore Hospital, 732 F.2d 1572, 1577, 221 USPQ 929, 933 (Fed.           
          Cir. 1984).  These showings by the examiner are an essential part           
          of complying with the burden of presenting a prima facie case of            

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