Appeal No. 94-3631
Application 07/883,513
rejections moot [brief, page 6]. We are without authority to grant this request. In order to obtain
priority benefits under 35 U.S.C. § 120, there must be a specific reference to the earlier
application in the specification of the application requesting the priority benefit. Although
appellants have attempted to amend the specification of this application to meet this requirement,
the examiner has denied entry of the amendment. We are without authority to enter papers which
have been denied entry by the examiner. The appropriate path to get the amendment entered
would have been by petition to the Commissioner under 37 CFR § 1.181 to compel entry of the
amendment by the examiner. Appellants elected not to follow this path, and instead, ask us to
enter the amendment. As we noted above, we do not have this authority.
Since the amendment to secure priority benefits under 35 U.S.C. § 120 has not been entered,
all arguments relating to the priority benefits appellants are entitled to are not properly before us,
and we will have no further comments on this issue.
We now consider the rejection of claims 1-15 under 35 U.S.C. § 103 as being unpatentable
over the teachings of Concannon in view of Chadwick. 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
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